Sepideh Nassabi, Minden Gross LLP, Minden Gross

Toronto woman must pay damages to Celine, Givenchy, Dior, and Louis Vuitton in counterfeit sales case

By Sepideh Nassabi

Natalie Mary Tobey sold counterfeit Celine, Givenchy, Dior, and Louis Vuitton merchandise through a retail business operating at various locations including a home on Old Yonge Street in Toronto that had been converted into a clandestine retail establishment.

Each of the luxury brand companies brought separate lawsuits against Natalie, with each lawsuit being essentially identical. The companies in the lawsuits each argued that they are the owners of each of their respective trademarks and the exclusive distributors in Canada of authentic merchandise bearing their respective trademarks, not Natalie.

Natalie’s defence was essentially that the merchandise she sold is substantially different from the merchandise sold by Celine, Givenchy, Dior, and Louis Vuitton, and that a reasonably informed member of the public would not confuse her merchandise with any of their merchandise.

The judge disagreed with Natalie. In fact, the case against Natalie was so strong that the judge held that it did not necessitate a trial as Natalie’s “…defence has no hope of success whatsoever.

How did Celine, Givenchy, Dior and Louis Vuitton get judgment against Natalie without a trial?

In Canada, a party to a lawsuit can bring what is called a summary judgment motion. Here, a judgment can be entered by the court against another party without a full trial. The test for granting a judgement prior to an actual trial is well-known – that there is no genuine issue requiring a trial if the judge is able to reach a fair and just determination on the merits on a motion for summary judgment. Basically, the judge must consider whether a process short of a trialgives the judge confidence that he/she can find the necessary facts and apply the relevant legal principles so as to resolve the dispute.

Celine, Givenchy, Dior, and Louis Vuitton brought a summary judgment motion against Natalie. Their efforts to put an early end to this lawsuit paid off because the judge hearing the summary judgment motion agreed that there was no genuine issue requiring a full trial.

Now the matter will go before a court-appointed person to determine just how much in damages or profits arising from the sale of counterfeit merchandise Natalie will have to pay to Celine, Givenchy, Dior, and Louis Vuitton.

Although the amount of money Natalie has made from the sale of th​is counterfeit merchandise is probably peanuts in comparison to what Celine, Givenchy, Dior, and Louis Vuitton make, these companies cannot just sit back and allow this to happen because, under ​Canadian trademark laws, a trademark owner must take steps to protect its trademark. Failure to take active steps to protect your trademark might result in you lessening or losing your trademark rights.

If you have any questions about your own trademark and monitoring the marketplace for any possible trademark infringement, please contact Sepideh Nassabi, Litigation lawyer and Registered Trademark Agent, at snassabi@mindengross.com.

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