Louis Vuitton Malletier v Toea Pty Ltd

In Louis Vuitton Malletier v Toea Pty Ltd, the Federal Court in Brisbane rejected an argument by Louis Vuitton that the market operators ‘joined’ the stallholders in their infringement of its trade marks, and therefore also committed an infringement offence.

Toea Pty Ltd owns and operates markets on the Gold Coast and grants licenses to about 450 permanent and casual stallholders. Louis Vuitton produces luxury leather goods that are embossed with its distinct trade mark logo.

Over a two-year period from mid-2003, Louis Vuitton hired private investigators who purchased counterfeit Louis Vuitton handbags, wallets, and scarves, from individual stallholders at the markets operated by Toea Pty Ltd.

Notices of infringement were served on both the individual stallholders and the defendant, Toea Pty Ltd.

Solicitors for Louis Vuitton expected Toea Pty Ltd to prevent further infringements and expel stallholders who had been given a warning notice and continued to sell infringing products.

Consequently Toea Pty Ltd warned several stallholders who had been issued with trade mark infringement notices that they were not to sell any Louis Vuitton goods (counterfeit or otherwise) in the future. If they persisted, they risked being expelled from the market, however, no stallholders were in fact expelled.

Rather than pursue the individual stallholders selling fake merchandise at the market, Louis Vuitton commenced proceedings against the defendant on the basis that its failure to take adequate steps to prevent infringement on their premises constituted trade mark infringement.

Justice Dowsett dismissed the application submitted by Louis Vuitton Malletier, ruling that there was no common purpose between the stallholders and the respondents and, consequently, the defendants were not liable for the trade mark infringement.

Justice Dowett said: “The respondents’ purpose was to conduct an efficient and profitable market. The purpose of each stallholder was the successful conduct of his or her stall. There was no common purpose.”

If you have any concerns about the sale of counterfeit goods, please contact McLaughlins Solicitors.