U.S. Retailer Cannot Block Hong Kong Site’s Counterfeit Products

The World in U.S. Courts: Spring 2013 - Intellectual Property (Trademark)

Juicy Couture, Inc. v. Bella International, Ltd. (U.S. District Court, S.D.N.Y., Mar. 12, 2013)

The fashion retailer Juicy Couture sued a Hong Kong retailer selling counterfeit Juicy Couture products in Hong Kong. A federal court in New York granted Juicy Couture’s motion for preliminary injunction enjoining the defendant from using various Juicy Couture marks in the U.S. The court, however, declined to ban the Hong Kong retailer from selling counterfeit Juicy Couture fashion apparel and accessories on its Hong Kong website, finding that the defendant did not have sufficient ties to the U.S. for the court to assert extraterritorial jurisdiction over the Hong Kong entity. The court focused on the fact that the Hong Kong retailer had only tenuous ties to the U.S. and de minimis sales of allegedly infringing products there. Indeed, the court noted that a portion of defendant’s sales to the U.S. were made to plaintiff’s investigators. The court also observed that a similarly based trademark case was pending in Hong Kong between the same parties, and deferred to that court for a resolution of the issue.

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