A sophisticated counterfeit ring selling fake jewellery and other goods was busted recently on Canadian soil. In December 2010, through a joint investigation by the Canada Border Services Agency (CBSA), the Ottawa Police Service and the Royal Canadian Mounted Police (RCMP), an Ottawa woman was charged with several offences in connection with the alleged smuggling, distribution and sale of fake Tiffany & Co. jewellery and designer handbags. According to the CBSA press release, the counterfeit jewellery, sold under the brand name Tiffany & Co., was distributed by the accused and a network of sales associates through parties at private residences, businesses, the internet and shopping mall kiosks. The accused even had the gall to name her company “The Little Blue Box,” in an apparent attempt to trade on the good reputation of Tiffany & Co. and, perhaps, also to bolster the appearance of legitimacy of the business. Investigators estimate the business grossed over $800,000 and that more than 1,500 victims may have purchased counterfeit items through this network. According to one media report, the allegedly fraudulent activities may date back to at least July 2003.
In connection with the alleged counterfeit jewellery, the accused individual is charged with several offences under the Criminal Code, the Copyright Act and the Customs Act. It is interesting to note here that while criminal provisions exist under the Copyright Act, specifically sections 42 and 43, there are no such provisions under the Trade-marks Act. Should the allegations of selling counterfeit jewellery under the Tiffany & Co. brand turn out to be true, Tiffany & Co. may also pursue civil remedies against the accused and The Little Blue Box company under both the Trade-marks Act and the Copyright Act, in addition to any criminal penalties that may be levied against the accused.
Although the enforceability of copyright in jewellery designs against counterfeiters under the Copyright Act is not clear under current Canadian law,1 it is apparent that Tiffany & Co. would possibly have claims for both trade-mark infringement and passing off under the Trade-marks Act, as the counterfeit jewellery bore the Tiffany & Co. registered trade-mark directly on the jewellery items in question, and were sold in the distinctive Tiffany blue boxes which are well known in the Canadian public as designating wares sourced from Tiffany & Co.
This case is illustrative of the myriad of options that a brand owner has at its disposal for shutting down counterfeit operations in Canada, and it will be of interest for members of the jewellery and fashion industries to monitor the progress of this particular case as it makes its way through the Canadian justice system.
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