Facebook team up with Gucci in counterfeit lawsuit fight in the US.

bolsa da gucci

On April 26th, Facebook and Gucci America Inc. filed a lawsuit against the head of an international counterfeiting business in the United States District Court for the Northern District of California – against a woman called Natalia Kokhtenko for counterfeiting and for supposedly sell counterfeit Gucci products and other brands imitating the original via Facebook and Instagram.

In their complaint, the companies alleged that at least since April 2020 the defendant “has operated an international online business trafficking in illegal counterfeit goods”. The companies also said that Natalia “used Facebook and Instagram to promote her websites selling counterfeit products, including counterfeit Gucci-branded handbags, shoes, clothing, and accessories, in violation of Facebook and Instagram’s terms and policies.”

Additionally, the companies alleged that the defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products. This practice helped the counterfeiter escape from Facebook’s and Instagram’s enforcement actions.

Facebook’s first action was disabling the defendant’s account and removed various posts promoting the sale of the counterfeit products alleging that the posts and account violated Facebook’s and Instagram’s terms and policies which doesn’t allow users from “doing anything ‘unlawful, misleading…or fraudulent”; infringing or violating the intellectual property rights of others; or breaching its terms of service, community standards or other terms and policies. Facebook added that it offers various measures to protect intellectual property rights.

Regardless of Facebooks actions, the defendant has continued to use Facebook and Instagram to promote her sales of counterfeit Gucci products with the “unauthorized use of several of Gucci’s registered trademarks, including its house mark GUCCI, a number of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature Webbing.” 

The defendant purportedly has “used these spurious marks in connection with a wide array of products, including jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks, handbags, backpacks, watches, sunglasses and bedding.” However, these were not genuine Gucci products, according to the plaintiffs. An example of an infringing product is shown below:

bolsa da gucci

Gucci alleged in the complaint that it spends millions of dollars promoting its trademarks, thus, there is a high level of consumer recognition, so the consumers recognize Gucci as the source of these products and confirmed that after purchasing the defendant’s products, confirmed that they were not original.

The causes of the action are counterfeiting, trademark infringement, federal unfair competition, unfair competition in violation of California Business and Professional Code, common law unfair competition and breach of contract under California Law.

The Plantiffs seek to stop the defendant from continuing selling counterfeit products and from continuing to violate Facebooks and Instagram’s terms and policies.

Author: Laís Iamauchi de Araujo, Associate Lawyer at Peduti Advogados.

Source: Luxury fashion brand Gucci has partnered with Facebook to file a joint lawsuit against the sale of counterfeit products. The companies alleged that the unidentified defendant created several Facebook and Instagram accounts and used them to sell fake Gucci products.

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

Brazilian Supreme Court recognizes international summons by post office as valid

Brazilian Supreme Court recognizes international summons by post office as valid

The summons of a person domiciled in Brazil to respond to foreign judicial proceedings must occur through a letter rogatory.

The letter rogatory is a form of communication between the judiciary of different countries, with the objective of obtaining collaboration for the practice of procedural acts, such as summons of a debtor resident in Brazil for the payment of a certain amount.

However, the Supreme Court (STF), in a recent decision, upheld a decision of the Superior Court of Justice (STJ), confirming the validity of the summoning of a Brazilian company regarding foreign lawsuit by post office, without the need of a letter rogatory.

Brazilian Supreme Court recognizes international summons by post office as valid

In the case analyzed by the STF (ARE 1137224), a Brazilian company had been cited by the Court of New York, by post office, to comply with a payment obligation. The STF took into account that there was a contract between the parties expressly providing for this method of service.

By approving the foreign judgment, the STJ held that the act of international service by post is valid, making the requirement of a letter rogatory more flexible. The decision of the STJ was based on the fact that postal summons is a legal means both in the U.S. and Brazilian Courts, as well as on the fact that there is a contractual provision.

The debtor company appealed to the Supreme Court, in order to annul the approval, since the summons did not take place by means of a letter rogatory. The STF, by maintaining the decision of the STJ, guarantees greater speed to summons of Brazilian companies and will prompt contracting parties to include in their contractual clauses the possibility of international summons by post.

Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

My trademark application was rejected by the BPTO, what should I do?

My trademark application was rejected by the BPTO

If your trademark application was rejected, probably the reason is because the trademark search was not done correctly.

There are many reasons to justify the rejection of a trademark application, we can cite some examples:

  • To reproduce or to imitate a trademark registration.
  • To use signs of generic, necessary, common, ordinary or simply descriptive nature, when related to the product or service to be distinguished.

This is the most common reasons but there many others in the Brazilian Intellectual Property Law.

Regardless of the cause, after the rejection decision is published, the applicant have 60 days to present an appeal against the rejection decision. 

My trademark application was rejected by the BPTO

The first step is asking for a professional a legal opinion to verify if it is possible to present some of the arguments below, and what are the chances of granting the trademark application. The basis of the appeal can be:

  • Difference of the trademarks in their wholes;
  • Difference of market fields;
  • No possibility of confusion or undue association;
  • Protection of the applicant’s previous business name;
  • Coexistence of similar third parties’ trademark on the BPTO’s database;
  • Enough distinctiveness.

If it is possible to appeal, we recommend that you appeal for do not lose the investment involved.

If it is not possible to appeal, the better way is to choose another name for your trademark and ask for a professional to do a full search.

Finally, before filing a trademark application, it is very important to ask a professional to do a full search, this will prevent the rejection of your trademark and avoid future losses.

The search will show you the chances of granting and if the trademark is available for registration.

Author: Luciana Santos Fernandes, Junior Associate at Peduti Advogados.

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”