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Legal Briefs

Chanel filed a lawsuit against Ilia Nicholas, alleging trademark counterfeiting and infringement.

NEW YORK — Chanel filed a lawsuit against Ilia Nicholas, alleging trademark counterfeiting and infringement. Nicholas does business as fashionbagcafe.com, ebagsfashion.com and Fastline Unlimited Premier, as well as Complete Trace Inc., an inactive Florida company that did business as Fastline Unlimited Trace. The lawsuit, filed in a federal court in southern Florida on March 23, alleged the defendants sold “counterfeit products, including at least high-quality handbags, bearing trademarks which are exact copies of the Chanel [trade]marks and trade dress.” Chanel asked the court for a preliminary and permanent injunction against the defendants and for punitive and statutory damages. The defendants could not be reached for comment.

Bare Escentuals filed a lawsuit against L’Oréal USA and L’Oréal SA on March 22 in a federal court in the Northern District of California alleging false advertising, trademark infringement and unlawful business practices. According to court documents, Bare Escentuals alleged that L’Oréal’s use of the “Bare Naturale” name infringes on its own trademark and that it intentionally targeted Bare Escentuals’ mineral-based foundation with “deliberately false and confusing advertising in order to mislead consumers and strip market share in the product segment.” Bare Escentuals’ products are sold at Sephora stores and through QVC. According to a L’Oréal spokesperson, “the lawsuit is completely without merit. We stand behind our claims 100 percent, and we will vigorously defend this matter in court.”

Gucci America, owned by PPR Group, Chloé SAS, owned by Compagnie Financière Richemont SA, and Alfred Dunhill Ltd., operated by DFR, joined forces and filed a trademark infringement lawsuit against MyRepublicanhandbag.com, Wholesalereplica.com, Replica-watch-town.com, Traderinasia Consulting and Kelvin Cho in Manhattan federal court on March 26. The lawsuit alleged that the defendants were manufacturing, importing, exporting, distributing and selling counterfeit reproductions of genuine Gucci, Chloé and Alfred Dunhill handbags and watches, among other items. According to court documents the plaintiffs filed a request for a temporary restraining order against the Web sites on March 27. A cause hearing in the case is currently set for April 17.

In an unrelated case, a Manhattan federal judge issued an opinion in favor of Gucci America Inc. in a pending trademark infringement lawsuit against Exclusive Imports International, Cyril Israelson, Innopex Ltd., Aaron Wexel, Joshua Frankel and Imperial Trading Ltd. According to court documents, more than 1,200 watches purported to be authentic Gucci watches were allegedly imported by the defendants. Judge Richard Conway Casey’s opinion, entered in a Manhattan federal court on March 14, said the defendants’ attempts to prove the watches in question were not counterfeit, “amounts to little more than smoke and mirrors.”

The defendants in the case had filed a counterclaim against Gucci for interfering with their contracts and had filed a request for summary judgment on the absence of willfulness. In turn, Gucci filed a request for summary judgment against the defendants. The opinion said “in light of the court’s finding that defendants infringed Gucci’s trademark by selling or offering for sale counterfeit watches, it would be inappropriate to grant summary judgment to defendants on the remedy of injunctive relief prohibiting future infringement.” Casey’s opinion granted Gucci’s motion and denied the defendants’ claim. The lawsuit has been ongoing since November 1999, and it will now go to a jury trial to determine damages.

Bernardo Footwear LLC filed a patent infringement lawsuit against Dillard’s, Federated Department Stores, Fortune Dynamic and Michael Kors in a federal court in Houston on March 22. According to court documents, Bernardo alleged the defendants infringed on patents it holds for two sandal designs called the “Medieval” and the “Molly.” Both Federated and Michael Kors declined to comment, citing company policy regarding ongoing litigation. The other defendants did not return calls for comment. The complaint alleged the named defendants each manufactured and sold sandal designs that infringed on Bernardo’s registered patents. The court papers also said that in August 2006, Bernardo had filed and settled other litigation relating to the Medieval sandal with Brown Shoe Co., J&A Shoe Co. Inc., Payless ShoeSource Inc., Michael Kors, New Century Footwear Inc. and White House|Black Market Inc.

A Manhattan federal judge issued an opinion on March 21 in a lawsuit between Beautiful Jewellers Private Ltd. and Tiffany & Co. Judge Kimba Wood granted Tiffany’s request to dismiss some of the counts, but denied a similar request in regard to other counts. The majority of counts from the original lawsuit, including alleged fraud, breach of fiduciary duty, unfair competition, unjust enrichment, and promissory estoppel, were not dismissed. According to court documents, the original lawsuit was filed over a contract between the two parties to set up a stand-alone Tiffany boutique in Mumbai. BJP alleged that Tiffany violated the terms of that agreement by terminating the relationship and allegedly selling products in India through a competing distributor. Beautiful Jewellers is an Indian corporation with its headquarters in Mumbai.

Cartier, a division of Richemont North America Inc., and Cartier International, were awarded a final judgment on consent in a trademark infringement lawsuit against Georgetown Fine Jewelry & Art. The judgment was entered in a Manhattan federal court on March 20. According to legal papers, the court issued a permanent injunction against Georgetown, prohibiting it from infringing on Cartier’s trademarks and awarded Cartier $25,000 in damages. In an unrelated case, on March 23, Cartier also won a consent judgment and permanent injunction against Lan Boa Duong, one of a list of defendants in a trademark infringement lawsuit that has been ongoing since 2002.

Franck Muller USA was awarded a final judgment on consent in its lawsuit against Yafa Antique Jewelry and other affiliated defendants for trademark infringement, unauthorized importation of goods, unfair competition and violation of the Tariff Act. Per the judgment, Yafa is permanently restricted from selling products that infringe on Franck Muller’s trademarks. No damages were awarded, and both parties agreed to pay their own legal costs. The judgment was entered March 19.