Luxury fashion brand Belstaff won its on-going battle against online counterfeiters following a civil lawsuit heard in the US courts. Judges ordered counterfeiters to pay more than $42 million in damages in the landmark counterfeit case, which resulted in 676 offending websites being handed over to Belstaff in mid-July.
The search results uncovered 3,000 websites selling counterfeits products, and the technology also identified that more than 800 of the websites were managed by one individual alone who was based in China
We first announced our intention to sell direct to customers through transactional websites in 2012, as part of a decision by our parent company JAB Luxury, which owns Belstaff and other luxury brands such as Jimmy Choo and Bally. Making the move to e-commerce was a major driver for the growth of our brand. However, alongside the clear benefits of making our products available online, we were conscious of the potential pitfalls, which included brand impersonation. With a loyal customer base and a 91 year old history, we were determined to stop our customers falling prey to counterfeit websites.
Within a short space of introducing the brand online, we became aware of the high number of counterfeit websites and generic sites offering fake products. The majority of the counterfeit products were at least six season’s old, and the designs had long been discontinued. The fake goods were mainly jackets and outerwear – particularly counterfeit copies of our best-selling leather jackets.
We were determined to take rapid action to protect both our customer base and our well-earned reputation. To do this we decided to embark on a major brand protection programme to aggressively protect all of our IP – from the registering of trademarks to individual products. We also sought specialist external help from MarkMonitor, the leader in online brand protection to tackle the escalating problem.
The JAB Luxury group invested in the brand protection services for three of its brands, to monitor the full range of the marketplaces and individual websites, including those selling counterfeit Belstaff products. The search would focus on those websites that used the company name in their domain name and also generic sites listing counterfeit products.
The search results uncovered 3,000 websites selling counterfeits products, and the technology also identified that more than 800 of the websites were managed by one individual alone who was based in China.
Despite us being aware of the counterfeiting problem, the results were still alarming and we wanted to take the strongest action possible to tackle the counterfeiters head on
Despite us being aware of the counterfeiting problem, the results were still alarming and we wanted to take the strongest action possible to tackle the counterfeiters head on. We decided to go forward with a litigation process, and the only available legislation that would allow us to proceed was in the US jurisdiction.
The revolutionary litigation in the US was sparked by a counterfeiting case brought by The North Face back in 2010. Previously, any brand attempting to take down a counterfeiting site had to physically serve notice to the guilty parties by handing them a letter. Now, if any brand is certain that a website is selling its counterfeit goods, an email can be sent to the counterfeiter and the legal process can start. The defendant is given a set period to make themselves known to the court, however in the vast majority of cases this is not fulfilled and the judge will give a default victory. By calculating the financial value of damages for each particular website, the judge then puts an estimated value on the damages figure.
In our case, we appointed the NYC based law firm Davis Wright Tremaine who had also acted for The North Face, and provided the team with the MarkMonitor data to take the legal process forward. The subsequent record result in June this year brought a Default Judgement Order of $42 million in damages, with all domains being turned over to Belstaff. A total of 676 websites selling counterfeit goods were disabled as instructed in the court order. The whole process took less than four months to resolve and none of the top 20 websites that were infringing against our brand are in operation today. The way that the US legislation works means that we can continue with this rapid and effective approach and do everything in our power to put a stop to the counterfeiters.
As a business, we have worked extremely hard during the last nine decades, to protect our British heritage and create a distinct and unique lifestyle brand
In recent years, we have seen a number of successful cases brought by fellow luxury brands. Last year, there was the high profile UK case brought by Richemont, the luxury conglomerate behind Cartier jewellery and Montblanc watches, who took action in the high court to stop British citizens from seeing websites selling counterfeit goods. In May,Paris-based Kering, the owner of a number of fashion brands including Gucci, Yves Saint Laurent and Puma sued a leading online marketplace for making it possible for US shoppers to order counterfeit goods in bulk from the marketplace’s various websites. Also, fashion brand TORY BURCH, won a trademark infringement lawsuit in the US against Lin & J International Inc. in July, having proved that the company had copied her trademarks and designs.
As a business, we have worked extremely hard during the last nine decades, to protect our British heritage and create a distinct and unique lifestyle brand. More recently, there has also been a strong focus on further offline retail expansion, with plans to broaden our presence in the UK and further afield in the US, Europe and Asia, including stores opening in South Korea, China and Japan.
Like most luxury fashion businesses, the company’s most important assets alongside our customers, are our brand and IP. We want to protect the brand and help our customers to identify counterfeits rather than question the authenticity of products they purchase. By tackling the counterfeiters with clever technology and the US legal process we have managed to achieve this, and we look forward to continuing to provide our customers with the most reliable and safe online offering.
Since the court decision in June, our brand protection strategy has remained firmly in place and the company will continue using the same sophisticated technology and legislation to keep the upper hand against any potential counterfeiters in the future.