Page 17 - The Katten Kattwalk - Summer 2025 - Issue 29
P. 17
Chanel’s quality control system assigns a unique found in favor of Chanel on its counterfeiting claim,
serial number to each item, allowing the brand to concluding that WGACA had sold items bearing
track the product’s journey through its distribution counterfeit CHANEL marks.
process and eventual sale. These serial numbers are Takeaways
tightly secured, but in 2012, approximately 30,000
serial numbers were stolen from one of Chanel’s Chanel’s victory emphasizes the necessity for careful
factories. When serial numbers are compromised or differentiation between resale and endorsement,
go missing, Chanel voids them in its system to prevent asserting that unauthorized use of a brand’s marks
unauthorized use. — whether by means of deceptive advertisement
or sale of knockoff goods — can give rise to serious
In the suit, Chanel claimed that multiple goods being legal consequences. For resellers, the key is that
sold by WGACA lacked conformity with Chanel’s while secondhand sales remain legal, they must be
usual quality control procedures and could not be conducted in strict compliance with trademark law.
proven to be genuine. Chanel argued that WGACA As luxury brands keep an eye on enforcing intellectual
was selling items with serial numbers that were either property rights, resellers must tread carefully in this
stolen from its factory, voided in its system or entirely area to avoid costly lawsuits.
counterfeit, with serial numbers that had never been
registered in Chanel’s database.
1 15 U.S.C. § 1125(a)(1)(A).
While most trademark infringement claims are 2 Dall. Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d
evaluated based on the likelihood of confusion, where Cir. 1979).
counterfeit marks are involved, the mark is considered 3 Chanel, Inc. v. WGACA, LLC, No. 18 CIV. 2253 (LLS), 2022 WL 902931 (S.D.N.Y.
Mar. 28, 2022).
inherently confusing, and the court need only find that 4 Chanel, Inc. v. RealReal, Inc., 449 F. Supp. 3d 422, 438 n.16 (S.D.N.Y. 2020).
the items are counterfeit and sold by the defendant 5 Fendi Adele S.R.L. v. Filene’s Basement, Inc., 696 F. Supp. 2d 368, 383 (S.D.N.Y.
in order to find infringement. Accordingly, the jury 2010), aff’d in part and vacated in part, 507 Fed. Appx. 26, 32 (2d Cir. 2013).
5
rblfmr/Shutterstock.com
17
