1 December 2010Trademarks

Nathalie Moullé-Berteaux: Lacoste

What is your role at the company? What do you do?

I am vice president, public and legal affairs, global, at Lacoste S.A, and a member of the Executive Committee. As such, I co-ordinate intellectual property, public and legal matters worldwide, especially in relation to all our licensees. This includes responsibility for the selective distribution set up since the beginning of the company in 1933.

How big a problem is online selling of counterfeit Lacoste products?

Well-known global brands such as Lacoste have always been primary targets for counterfeiters.

Fighting counterfeiting is a key priority for Lacoste, whose founder, the famous tennis champion René Lacoste, envisioned as early as 1927 how a distinctive trademark such as a crocodile embroidered on a polo shirt could strengthen the relationship between a company and its customers.

Today, the Lacoste brand remains a strategic asset for the company’s business model.

Among other services, the Internet is a great resource for customers to buy online. Lacoste has confirmed its ambition to become a major e-operator. It provides comprehensive information about its activities on www. lacoste.com, and more recently launched its first European official e-commerce websites in France, Germany and the United Kingdom with a large offer of products.

However, the Internet is also an important marketplace for counterfeits, requiring Lacoste to monitor and stop the distribution and promotion of Lacoste counterfeits and seek co-operation from major Internet players in that regard in the best interest of its partners and customers.

What kinds of products are most regularly counterfeited?

The Lacoste legend began with René Lacoste in 1927, when he revolutionised men’s sportswear, replacing for his personal use the long-sleeved, starched classic tennis shirts with what has now become the famous Lacoste polo, known as L12.12.

Today, this L12.12 polo shirt is the product most regularly copied among other Lacoste products such as fragrances, shoes, etc.

How can you fight against it?

Lacoste offers its customers the guarantee of a high-quality selective distribution network set up since the origin of the company, which secures its clients’ interests through a network of boutiques and specialised multibrand stores worldwide.

A fully dedicated team of in-house trademark and competition attorneys is responsible for the global protection of the Lacoste brand. Licensees, distributors, clients and outside counsels are key contributors to this strategic war against counterfeiting.

Among others, we participate to anti-counterfeiting warning campaigns through various associations such as Unifab and Comité Colbert in France. Raising awareness among buyers of counterfeits about social and environmental issues is fundamental and part of Lacoste’s corporate responsibility.

Lacoste also partners with law enforcement agencies worldwide to dismantle underground illegal organisations, conducting counterfeit seizures and legal actions, whether administrative, civil or criminal.

Where do you find most of the counterfeits (eBay, Amazon, other auction websites, etc.)?

It varies from one country to another depending on the market share of the marketplaces offering both auction and classified services. Those displaying a mixed offer of authentic secondhand Lacoste products and counterfeits generate a confusion highly detrimental to the Lacoste brand and are as such a major concern.

Whose responsibility should it be to police the online marketplace (Lacoste, individual websites, search engines)?

Fighting counterfeiting is a global responsibility.

It is the brand’s primary responsibility, but everyone at every level—from consumers to governments, through each economic actor of the brick and mortar and online trade—could and should co-operate to police the global marketplace, and prevent and stop counterfeiting.

Partnering will make a difference.

Is the legal position clear, as far as you are concerned? Does it vary across the world?

Some online marketplaces have tried to escape their responsibility regarding the sale of counterfeits by claiming safe harbour provisions originally drafted for Internet hosts having a passive but key role regarding the functioning of the Internet.

Hopefully, there are now more and more rulings to clarify the status of online marketplaces and related responsibility. On September 3, 2010, the Paris Court of Appeal upheld a 2008 ruling of the Paris Commercial Court confirming eBay’s monitoring obligation as a service provider, eBay’s gross negligence and misconduct regarding counterfeit sales on its marketplace and eBay’s negligent liability.

The Paris Commercial Court limited its jurisdiction to eBay.com, eBay.co.uk and eBay.fr, and therefore sentenced eBay to pay a reduced but nonetheless outstanding amount of damages of over €5.5 million.

Earlier in 2010, French Courts sentenced eBay for the purchase on search engines of keywords similar to well-known trademarks to promote its own business and for contributory liability in a criminal case.

Is there anything you’d like to change about the way that search engines/retail sites/legislators/service providers approach this issue?

Partnership should become the global standard.

In addition to the notice and take-down policies provided by online marketplaces and search engines, those Internet actors should partner with brands and make brand’s enforcement efforts more efficient through the effective implementation of proactive and preventive measures, in particular against bad faith vendors.

Such partnership has already started in France with the signature on December 16, 2009 of a charter under the patronage of Christine Lagarde, Minister for Economy and Finance. Lacoste and Price Minister, the number one marketplace in France are among the signatories. eBay and Amazon are not.

Other online marketplaces such as Japanese websites Yahoo!Japan and Rakuten Auctions signed similar but bilateral co-operation agreements early in 2009 and more recently on September 24, 2010.

Co-operation is also on discussion at the European level within the Internet Stakeholder Dialogue, set up in March 2009 by DG Markt.

What do you think should happen with the e-commerce directive?

The current issue is not the European e-commerce directive itself.

It’s more about the confusion resulting from the opportunist strategy and misleading interpretation of the host status by some leading Internet players who unfairly tried to make profits out of counterfeit sales without being held liable for that.

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