Luxottica wins first round in Ray-Ban trademark bout

Italian eyewear company Luxottica has won the first round in a dispute against a market in Atlanta over contributory trademark infringement.

Judge Amy Totenberg rejected Greenbriar Marketplace’s motion for summary judgment, directing the parties to file their consolidated pre-trial order no later than November 15.

Luxottica filed the suit in April 2015 at the US District Court for the Northern District of Georgia, alleging that vendors at two locations—indoor flea-market Greenbriar Discount Mall and Greenbriar Strip Plaza—had sold counterfeit goods.

The goods included knock-off Ray-Ban sunglasses and Oakley products.

Luxottica owns brands including Ray-Ban, Oakley, Vogue Eyewear, Persol, Oliver Peoples, Alain Mikli and Arnett.

According to the claim, agents from the US Department of Homeland Security and the Atlanta Police Department raided the Discount Mall in 2013, seizing more than 15,000 units of counterfeit products.

In January 2015, Luxottica sent a cease-and-desist letter to the manager of the Strip Plaza.

The filing said that the illegal goods will “substantially and continuously harm the rights of intellectual property owners such as Luxottica”.

Greenbriar filed for summary judgment in November last year, arguing that “as a mere property owner with no operational or managerial control over the Greenbriar Discount Mall, it is not liable for contributory trademark infringement as a matter of law”.

Totenberg rejected the motion on September 30, adding that “defendants also do not argue in their motions that they had no knowledge of the alleged widespread sale of counterfeit merchandise”.

“Instead, their arguments focus solely on the contention that these defendants lack the requisite degree of control over the flea market and the infringing conduct at the flea market to be held liable for contributory trademark infringement,” she said.

Stefano Orsini, group risk and compliance director, Luxottica Group, said: “Luxottica has a zero tolerance policy when it comes to counterfeiting. We have invested so much in our brands, from research and development to product development, that protecting them is paramount.”

He added that in cases like this, shoppers are being deceived into “buying fake products that unlawfully use our logos and trademarks”.

“Premium sunglasses, produced under high-quality controlled standards, are designed to protect consumers' eyes from the harmful rays of the sun. This type of counterfeit activity is not only a threat to our integrity, but a threat to consumer health,” said Orsini.

According to the director, Luxottica seized nearly 6 million units of fake products last year and continues “to be aggressive in our efforts to clean up the marketplace”.