In an effort to crackdown on the market for luxury counterfeits, Gucci has filed three new lawsuits, accusing Lord & Taylor, Sam’s Club, and Century 21 of “unlawful[ly] promot[ing], distribut[ing], and selling imitation bags and other accessories bearing its famous GUCCI trademarks. In three complaints that it lodged with the U.S. District Court for the Southern District of New York on November 21, Gucci claims that its agents purchased products bearing its trademarks from Lord & Taylor, Sam’s Club, and Century 21 (collectively, the “defendants”)’s websites and confirmed that the products are, in fact, “non-genuine.”
Setting the stage in its complaint, Gucci asserts that it is “one of the best- known and most valuable global brands” and that the products that it distributes under the GUCCI trademarks “are of the highest quality and are subject to exacting quality control standards.” Kering-owned Gucci asserts that it “takes pains to ensure the quality of its products by monitoring their production and distribution,” which has enabled it to develop “a reputation for providing the highest-quality products under the GUCCI Marks and consumers have come to expect that products bearing the GUCCI Marks are of the highest quality and workmanship.”
In furtherance of its commitment to “protecting and safeguarding its intellectual property rights and assets to ensure that Gucci’s unique and valuable creativity and heritage are preserved, safeguarded, and enforced,” and to “ensure the quality and authenticity of products offered for sale bearing the GUCCI marks,” the Italian fashion brand contends that it sells its products “only through its own boutiques and stores and to authorized retailers.”
With the foregoing in mind, upon learning that Lord & Taylor, Sam’s Club, and Century 21 were offering up Gucci handbags on their websites, agents for Gucci acquired bags, including a “Gucci GG Marmont Matelassé Mini Bag in Black” for $1,100 from Sam’s Club website, a “GG Marmont Shoulder Bag” for $2,400 from Lord & Taylor’s website, and a “Horsebit 1955 mini GG” bag for $2,199.99 from Century 21’s site, among others, all of which it determined were counterfeit.
After certifying that the products at issue were, in fact, fake, Gucci claims that it communicated its findings to the defendants, which responded as follows …
– Counsel for Lord & Taylor admitted that it was aware that it was selling counterfeit products, but then failed to respond further to Gucci’s communications.
– Century 21 responded that, although it believed the counterfeit products are authentic, it would remove the Counterfeit Products from Century 21’s store as it investigates. However, weeks after Century 21 agreed to remove the Counterfeit Products from its store, Gucci’s agents continued to observe some counterfeit products for sale at Century 21’s store.
– Counsel for Sam’s Club removed all remaining inventory of the counterfeit products from its stores and website and by identifying the suppliers of the counterfeit products. Counsel for Sam’s Club informed Gucci that defendants Pinnacle and ASL supplied Sam’s Club with the counterfeits.
In addition to causing “confusion, mistake, or deception” among consumers as to the source or sponsorship of the counterfeit goods, Gucci asserts that the defendants’ offering of products bearing counterfeits of GUCCI marks is “willful, intended to reap the benefit of the goodwill of Gucci.” Specifically, Gucci claims that the defendants’ “ manufacturing, advertisement, offering for sale, sale, distribution, import, and/or export of counterfeit GUCCI products under and/or bearing trademarks and trade dresses that are identical or highly similar to the GUCCI marks” is likely to prompt consumers to believe that the non-genuine products have been manufactured and/or approved by Gucci.
As such, the counterfeit products sold by the defendants are not only “directly compet[ing] with Gucci’s products,” but at the same time, they are also “lessening the capacity of [Gucci’s] marks to exclusively identify and distinguish Gucci and its goods, and tarnishing them through association with the defendants’ goods, which are of poor quality and workmanship.”
Against that background, Gucci sets out claims of counterfeiting and trademark infringement, unfair competition, false designation of origin, and trademark dilution against the retailer defendants and a number of other entities, and is seeking injunctive relief and monetary damages.
One Takeaway: In what is one of the most compelling claims, Gucci’s asserts that the counterfeit goods being offered up by Lord & Taylor, Sam’s Club, and Century 21 are actually competing with its own offerings. This is an interesting – and pretty plausible – argument in light of the fact that Lord & Taylor and co. are reputable retailers that very well may have access to authentic goods – albeit not in an authorized retailer capacity. While off-price retailers – from Century 21 to T.J. Maxx, for instance – have long had access to/offered up limited quantities of luxury garments and accessories, which they have long held out as authentic, at least some have come under fire thanks to their alleged offering of counterfeits.
Maybe more interesting, though, is the idea that consumers are, min fact, being duped into buying fakes. This is particularly striking given the rampant rise of “dupes” – or lookalike products that, despite their name, often amount to counterfeit and/or otherwise infringing goods – and that consumers are actively/knowingly seeking out as an alternative to the “real thing” – and thus, not being tricked into buying inauthentic goods.
The cases are Gucci America, Inc. v. LORD & TAYLOR ECOMM LLC, 1:23-cv-10239 (SDNY); Gucci America, Inc. v. Sam’s West, Inc., et al., 1:23-cv-10246 (SDNY); and Gucci America, Inc. v. Century 21 USA LLC, et al., 1:23-cv-10247 (SDNY).
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