28 April 2021TrademarksMuireann Bolger

Facebook, Gucci jointly sue alleged Russian counterfeiter

Gucci and Facebook have filed a joint lawsuit in California against a Russian resident who allegedly used the social media platform to sell the fashion label’s designer products.

The complaint was filed on Monday, April 26, at the US District Court for the District of California.

The move is a first for Facebook and follows similar actions by Amazon, which has filed similar lawsuits over the past year with luxury brands Valentino and Ferragamo.

A natural next step

In a statement, Facebook confirmed that it had filed a trademark infringement suit against “the head of an international counterfeiting business” and described the collaboration as a “natural next step”.

The statement said: “Cross-industry collaboration with brands like Gucci is critical to this type of enforcement action and to Facebook’s broader efforts to tackle counterfeits on its services.

“Facebook and Gucci’s collaborative relationship is built upon joint commitment and efforts to combat the promotion and sale of counterfeit goods online. This lawsuit—the first of its kind for Facebook and Gucci—is a natural next step in the progression of our partnership. We’re working to ensure Facebook’s platforms are safe for people and businesses to connect, share and buy and sell together.

The statement added that the lawsuit was a clear signal to those who would seek to engage in similar abuses that this behaviour will not be tolerated. “Facebook and Gucci plan to continue their enforcement efforts against counterfeiting and hold those who abuse Facebook and Instagram accountable,” it added.

According to the complaint, Natalia Kokhtenko used Facebook and Instagram to promote her websites selling counterfeit products, including fake Gucci-branded handbags, shoes, clothing, and accessories, in violation of Facebook and Instagram’s terms and policies.

It held that Kokhtenko lived in Russia and used multiple aliases and online monikers when engaging in the alleged illicit activity.

In partnering with Facebook, Gucci claimed that it “is bringing this action to deter the repeated counterfeiting of the defendant, who is running a sophisticated counterfeiting scheme to sell replica Gucci goods at high price points for counterfeits”.

Unauthorised use of trademarks

Facebook held that while it has previously disabled Kokhtenko’s accounts and removed posts for promoting the sale of counterfeit goods, she had continued to use the social media platforms to promote the sale of Gucci-branded counterfeit goods. This activity included “unauthorised use of several of Gucci’s registered trademarks”, including its house mark ‘Gucci’, a number of Gucci’s stylised Gucci and GG marks, and Gucci’s green/red/green “signature webbing”, said the statement.

According to Gucci, the fashion label bought a counterfeit handbag from Kokhtenko’s website, which was received by Gucci’s agent in California in January 2021. Following an examination, Gucci confirmed the handbag was fake.

The complaint held that the use of Gucci trademarks in connection with Kokhtenko’s products destroys the value, exclusivity and reputation of Gucci.

In a statement to Reuters, Gucci said that more than one million pieces of content were removed from Facebook and Instagram in the first half of 2020, based on thousands of reports of counterfeit content from brand owners, including Gucci.

It added that in 2020, Gucci's IP team had taken down four million online counterfeit product listings, and 45,000 websites, including social media accounts, as well as seizing 4.1 million counterfeit products.

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