3 cases of counterfeiting and what we can learn from them

An infringement lawsuit is a lengthy and costly procedure, both for the infringer and the rights holder. Infringement can occur in the case of an identical reproduction of a trademark, but also in the case of more or less crude imitations. In this article, we will look back at three high-profile counterfeiting cases. Then we will give you our advice on how to avoid finding yourself in a similar situation.

1. Louis Vuitton vs Louisvui Tondak (South Korea)

In that case, Louis Vuitton discovered a South Korean fried chicken restaurant." Louis Vuiton Dak ". In addition to name infringement, the restaurant's logo and packaging were very similar to those of the French designer. For Louis Vuitton, the proximity to a fried chicken restaurant constituted an attack on its image. The Korean restaurant therefore chose to change its name to "LOUISVUI TONDAK" ("Tondak" meaning "whole chicken" in Korean). But the change was not enough. The judges ordered the restaurant owner to pay a

2.       against  (China)

3M is an American company with varied activities. It markets products ranging from telephone accessories to water purifiers. 3M was established in China in the 1980s and has registered several trademarks, which, given their success, have been copied. As early as 2015, 3M had already won its counterfeiting lawsuit against a Chinese brand "3N", which produced products similar to its own. More recently, 3M was confronted with the registration of a brand name "3N". which was used for water fountains in the following form: .

The judges condemned the opponent who used the mark in a form not conforming to its registration, which constituted an infringement of the 3M mark. In addition, the Chinese court took into account the notoriety of the 3M trademark to sanction the Chinese applicant.

3. Adidas v. Forever 21 (United States)

The German trade mark Adidas recently opposed Forever 21, the clothing distributor, because some of its products had a design consisting of 3 stripes. According to Adidas, the use of that design constituted an infringement and a dilution of its trade mark. Forever 21 was also attacked for unfair competition and deceptive trade practices.

However, the US distributor contested this complaint, recalling that since 2006, Adidas has systematically monitored the clothes offered for sale by Forever 21 and opposes any marketing of clothing with stripes (even when these are purely decorative).

Adidas is actively defending its brands in the United States. The sports brand has already sued Ecco, Marc Jacobs and Tesla for infringement.

This case was finally settled out of court between Forever 21 and Adidas.. The terms of the settlement have not been made public.

How to avoid an infringement lawsuit?

Most infringement lawsuits can be avoided with inexpensive means: prior art searches and trademark monitoring.

On the counterfeiter's side: the search for anteriorities

The cases cited above revealed the counterfeiter's bad faith. But it also happens that the counterfeiter is not aware of his mistake at the time of filing. In order to avoid counterfeiting "out of ignorance", it is essential to carry out a search among prior trademarks, companies and domain names.

Such research, when done properly, is costly and can be tedious. But a filing made without a search opens the door to enormous risks - especially that of an infringement lawsuit. To learn more about prior art searches, read our article.

On the trademark owner's side: surveillance

These counterfeiting cases demonstrate the need to monitor one's trademark. Whether it is Louis Vuitton, 3M or Adidas, to have strong brands, it is necessary to actively defend them. With surveillance, you are informed as soon as possible of embarrassing trademark registrations and can act at a lower cost. An opposition costs much less and takes less time than an infringement lawsuit. We can monitor your brands for you.