Can Registered Trademarks Block Counterfeit Products and Domains?

Posted: 6 years ago in: NewsPosted By admin

In 2011, damages totalling $164m were awarded in a trademark infringement and counterfeiting case in New York to Tory Burch LLC.  Tory Burch LLC sued several defendants concerning use of their trademarks on counterfeit goods relating mainly to clothing and footwear and fashion accessories.

The case argued the defendants were distributing, offering for sale, via the internet, goods that were counterfeit reproductions of Tory Burch’s registered trademarks.  The court held that Tory Burch owned all right, title and interest in and to the Tory Burch marks in connection with the Tory Burch goods, and the marks were valid, and were entitled to protection.

The case heard that the defendants offered counterfeit goods, footwear, handbags and accessories, bearing counterfeits of the Tory Burch marks to buyers in the US.  The defendants also used the internet to offer counterfeit goods for sale via a network of web sites which used domain names that contained the Tory Burch marks.

The judge granted a permanent injunction to stop passing off,  distributing and using infringing domain names to sell products that counterfeited the Tory Burch trademarks. The court also stopped the registration of any additional domain names that included any of the Tory Burch marks, as well the operation and hosting defendants of the existing infringing web sites.

ISP’s, registries and registrars were barred from providing services to the defendants. Damages of $2m against were awarded each defendant + $4m against each defendant for use of marks. Interestingly, the court also granted a restraining order against monies in the defendant’s PayPal accounts.

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