Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc.

Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc.
Court (s) Database
Federal Court Decisions
Date
2011-06-27
Neutral citation
2011 FC 776
File numbers
T-1276-10
Notes
Reported Decision
Decision Content
Federal Court
Cour fédérale
Date: 20110627
Docket: T-1276-10
Citation: 2011 FC 776
Ottawa, Ontario, June 27, 2011
PRESENT: The Honourable Mr. Justice Russell
BETWEEN:
LOUIS VUITTON MALLETIER S.A.;
LOUIS VUITTON CANADA, INC. ;
BURBERRY LIMITED; and
BURBERRY CANADA INC.
Plaintiffs
and
SINGGA ENTERPRISES (CANADA) INC., LISA LAM and KENNY KO (ALSO KNOWN AS WAI SHING LO and SHING WAI LO), COLLECTIVELY DOING BUSINESS AS SINGGA ENTERPRISES CANADA INC.; YUN JAUN GUO (ALSO KNOWN AS JESSIE GUO and YUN JUAN JESSIE GUO), DOING BUSINESS AS CARNATION FASHION COMPANY; and MONICA MAC (ALSO KNOWN AS JIA XIN MAI MAC and MONICA JIA XIN MAI MAC), PABLO LIANG, REBECCA MAC and GORDON CHAN (ALSO KNOWN AS HUNG BING CHAN), COLLECTIVELY DOING BUSINESS AS ALTEC PRODUCTIONS
Defendants
REASONS FOR JUDGMENT AND JUDGMENT
THE MOTION
[1] This is a motion by the Plaintiffs, Louis Vuitton Malletier S.A., Louis Vuitton Canada Inc., Burberry Limited, and Burberry Canada Inc., (collectively the Plaintiffs) for an Order on Summary Trial pursuant to Rule 216 of the Federal Court Rules for Judgment against the Defendants in the terms of the draft Judgment attached to the Plaintiffs’ Notice of Motion as Schedule “A”.
BACKGROUND
[2] None of the Defendants, with the exception of Guo (doing business as Carnation Fashion Company) has filed any materials in response to this motion or attempted to cross-examine any of the Plaintiffs’ affiants on their affidavits.
[3] None of the Defendants, once again with the exception of Guo, attended the hearing of this matter. However, immediately prior to the hearing, defendant Ko, claiming to speak on behalf of himself, Lam and Singga Enterprises, wrote to the Court to request an indefinite adjournment of the hearing for alleged health and injury reasons. Nothing in Ko’s request was substantiated, his communication with the Court were inconsistent, and evidence obtained by the Plaintiffs strongly suggested that Ko was not being entirely honest with the Court about his alleged injuries and their impact upon his ability to attend the hearing. In the end, the Court decided that Ko had not provided sufficient explanation or substantiation to warrant an adjournment. In fact, the Court concluded that, on the eve of the hearing, Ko was attempting to thwart the proceedings by seeking an adjournment on grounds that he was not prepared to substantiate.
[4] At the commencement of the hearing on March 8, 2011, Mr. Tak Chan, a paralegal in Toronto, appeared before the Court and asked for an indefinite adjournment on behalf of M.Mac, Liang and Chan. Once again, nothing was presented to the Court to substantiate anything Mr. Tak Chan said or to explain why, given the history of this dispute and previous directions given to the Altec Defendants by the Court, these particular defendants had waited until the hearing to request an adjournment. As with Ko and Lam, no motion record or materials was filed and there was insufficient evidence before the Court to allow the Court to determine whether anything that was said as part of the request bore any relationship to reality. In the end, there was insufficient information and explanation to warrant an adjournment. All Defendants have been given ample time to file materials and to make themselves available. These defendants have simply ignored Court procedure and directions and have attempted at the last minute to derail the hearing for no reason that they have thought it worthwhile to substantiate. Consequently, no adjournment was granted and the hearing proceeded as scheduled.
[5] Guo is in a slightly different position from the other Defendants. She did not file a motion record but she did attend the hearing and filed some documents that she thought had relevance to her position. When she spoke at the hearing (through an interpreter) she readily conceded that she had engaged in infringing activities as alleged by the Plaintiffs, but she asked the Court to take into account various mitigating factors when assessing damages and costs against her.
[6] With the possible exception of Guo, the Plaintiffs’ position in this motion and the Plaintiffs’ evidence stands unchallenged. The Plaintiffs conceded that Guo’s activities were not on a scale comparable to the other Defendants and that, in coming to the hearing, she had at least shown some respect for the proceedings and had taken seriously the allegations and the evidence presented by the Plaintiffs. The same cannot be said of the other Defendants.
[7] Because the Plaintiffs’ position and evidence stands almost unchallenged, I will follow closely their methodical presentation of the facts and the law. My review of the evidentiary record reveals that they have stated the evidence accurately and that the conclusions they have asked the Court to draw are, if anything, decidedly on the conservative side. The evidence reveals that the Singga Defendants and the Altec Defendants are sophisticated operators and the evidence against them took a significant amount of time and resources to gather. It has to be reviewed in some detail in order to gauge the full extent of their infringing activities. I find the assessment of the situation as found in the evidence presented by the Plaintiffs to be fair and accurate. What the evidence reveals is as follows.
[8] The Plaintiff, Louis Vuitton Malletier S.A. (“Louis Vuitton”), is the owner of the trade-marks listed in Schedule A to the Statement of Claim, (the “Louis Vuitton Trade-marks”), which have been used by Louis Vuitton to identify Louis Vuitton products in Canada, since at least as early as the dates listed in Schedule A to the Statement of Claim. The Louis Vuitton Trade-marks have been registered, or applied for, in Canada by Louis Vuitton for use in association with the wares and services also listed in Schedule A to the Statement of Claim, and such registrations are valid and subsisting (with one application pending).
[9] The Louis Vuitton Trade-marks are and have been continuously used by Louis Vuitton in association with its products in Canada, and have never been abandoned.
[10] Louis Vuitton is the only authorized manufacturer and distributor of genuine products bearing the Louis Vuitton Trade-marks. Louis Vuitton exclusively sells Louis Vuitton products in Canada through its wholly owned subsidiary, the Plaintiff Louis Vuitton Canada Inc. (“Louis Vuitton Canada”).
[11] Louis Vuitton maintains strict quality control standards for all its products. Products bearing the Louis Vuitton Trade-marks convey, and are associated with, the highest standards and quality. All genuine Louis Vuitton products are inspected and approved by Louis Vuitton prior to distribution and sale, and are sold only through Louis Vuitton stores and Louis Vuitton boutiques within department stores, such as Holt Renfrew, or over the internet at the Louis Vuitton authorized web-site www.louisvuitton.com. There are only nine Louis Vuitton stores and/or boutiques in Canada.
[12] Louis Vuitton has established a well-known reputation and goodwill in the Louis Vuitton Trade-marks in Canada. As a result of the fame that the Louis Vuitton Trade-marks have achieved in this country, the goodwill associated with the Louis Vuitton Trade-marks is of significant value to Louis Vuitton and of fundamental importance to its overall business in Canada.
[13] Louis Vuitton also owns copyrights in the Multicolored Monogram Prints listed and shown in Schedule C to the Statement of Claim (the “Louis Vuitton Copyrighted Works”), including a black version (the “Black Multicolour Monogram”) and a white version (the “White Multicolour Monogram”).
Business of the Burberry Plaintiffs
[14] The Plaintiff, Burberry Limited (“Burberry”), has continuously used in connection with its products a distinctive check trade-mark (the “BURBERRY CHECK”) since the 1920’s, the BURBERRY word mark since 1856, and the EQUESTRIAN KNIGHT DEVICE since 1901 (collectively, the “Burberry Trade-marks”). Burberry is the owner of the Burberry Trade-marks as listed in Schedule B to the Statement of Claim, which have been used by Burberry to identify Burberry products in Canada, since at least as early as the dates listed in Schedule B to the Statement of Claim. The Burberry Trade-marks have been applied for and registered in Canada by Burberry for use in association with the wares and services also listed in Schedule B to the Statement of Claim, and such registrations are valid and subsisting.
[15] The Burberry Trade-marks have been continuously and extensively used by Burberry in Canada in association with its products in Canada, and have never been abandoned.
[16] Burberry is the only authorized manufacturer and distributor of genuine products bearing the Burberry Trade-marks. Burberry Canada Inc. (“Burberry Canada”) is an authorized distributor of Burberry products in Canada.
[17] Burberry has direct control over the character and quality of the products and services associated with the Burberry Trade-marks. The Burberry Trade-marks inform the prospective customer that what he or she is about to purchase is made of the finest materials, is a product of the highest quality and workmanship, and is backed by a company that stands behind the high quality of its products. All genuine Burberry products are inspected and approved by Burberry prior to distribution and sale, and are sold only through Burberry stores and through speciality department stores, such as Holt Renfrew, Oglivy, W&J Wilson and Leone.
[18] Burberry has established a well-known reputation and goodwill in the Burberry Trade-marks in Canada. As a result of the fame that the Burberry Trade-marks have achieved in this country, the goodwill associated with the Burberry Trade-marks is of significant value to Burberry and of fundamental importance to its overall business throughout Canada.
The Defendants
[19] The Defendants Singga Enterprises (Canada) Inc. (the “Singga Corporation”), Lisa Lam (“Lam”) and Kenny Ko (“Ko”) (collectively, the “Singga Defendants”) operate a business (“Singga”) under the corporate and trade name Singga Enterprises Canada Inc.. The Singga Defendants offer for sale and sell fashion accessories through their physical warehouse located at the back alleyway entrance to 101 - 3373 Kingsway, Burnaby, BC, V5R 5K6 (the “Singga Warehouse”), and through their web sites at <singga.ca> and <singga.com>. The Singga Defendants represent to the public that the Singga business has warehouses and distribution capabilities across Canada, and carries on the activities outlined below on a cross-Canada basis.
[20] The Defendant Lam is, and at all material times has been, the sole officer and director of Singga Corporation. The Defendant Ko is, and at all material times has been, the principal in control of Singga Corporation. Both Lam and Ko have expressly directed, ordered, authorized, aided, and abetted the activities of Singga, and both have personally been involved in the activities of Singga, as shall be outlined in further detail below.
[21] The Defendants Monica Mac, aka Jia Xin Mai Mac and Monica Jia Xin Mai Mac (“M.Mac”), Pablo Liang (“Liang”), Rebecca Mac (“R.Mac”) and Gordon Chan aka Hung Bing Chan (“Chan”) (collectively, the “Altec Defendants”) operate a business, under the name Altec Productions (“Altec”), through their web sites at <altecproductions.com> and <aporder.com> and through their warehouse located at Unit 16 – 300 Don Park Road, Markham, Ontario, L3R 2V1 (along with a previous warehouse location in Markham, Ontario) (the “Altec Warehouse”). The Defendants M.Mac, Liang, R.Mac and Chan incorporated a company shortly before commencement of this action (2247283 Ontario Inc., doing business as Altec Productions, of which M.Mac is the sole named officer and director), but each of them has and continues to expressly direct, order, authorize, aide and abet the activities of Altec, and are all personally involved in the activities of Altec, as shall be outlined in further detail below. Altec is engaged in its activities on a cross-Canada basis, as shall also be outlined in further detail below.
[22] At least in or about 2009 and early 2010, Singga also directed potential customers to Altec for the purpose of purchasing large volumes of products in Ontario and Altec has paid Singga a commission for such sales.
[23] The Defendant Yun Juan Guo aka Jessie Guo (“Guo”) operates her business, under the business name Carnation Fashion Company (“Carnation”), from a retail store located at 101 - 3373 Kingsway, Burnaby, BC, V5R 5K6. The Defendant Guo represents Carnation as “Wholesalers and/or Manufacturers”. The Singga Warehouse is located directly behind Carnation.
[24] It is through the businesses as outlined above that the Defendants have carried out their infringing activities.
Activities of the Singga Defendants
[25] Starting at a time unknown to the Plaintiffs, but since at least as early as January 2008, the Singga Defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and infringing fashion accessories, specifically handbags, in Canada, bearing the Louis Vuitton Trade-marks and/or trade-marks likely to be confused with the Louis Vuitton Trade-marks (“Counterfeit and/or Infringing Louis Vuitton Items”), some of which bear unauthorized reproductions of the Louis Vuitton Copyrighted Works. Further, starting at a time unknown to the Plaintiffs, but since at least as early as June 2009, the Singga Defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and infringing fashion accessories, specifically handbags, in Canada, bearing the Burberry Trade-marks and/or trade-marks likely to be confused with the Burberry Trade-marks (“Counterfeit and/or Infringing Burberry Items”).
[26] Such activities of the Singga Defendants have been carried out over a sustained period of time, with full knowledge of the Plaintiffs’ respective rights in and to the Louis Vuitton and Burberry Trade-marks and the Louis Vuitton Copyrighted Works. Their activities are large in scale, involving the manufacture and importation of bulk quantities of Counterfeit and/or Infringing Louis Vuitton and Counterfeit and/or Infringing Burberry Items (collectively, the “Counterfeit and/or Infringing Items”), and Canada-wide distribution, offer for sale and sale of such items.
[27] In or about September 2008, it came to Louis Vuitton’s attention that the Singga Defendants were engaged in the sale of Counterfeit and/or Infringing Louis Vuitton Items. In July 2008, the Director of Civil Enforcement for North America at Louis Vuitton observed several handbags bearing trade-marks confusingly similar to some of the Louis Vuitton Trade-marks, at a store operating as “Les Boutiques Sieur De Champlain” in Québec (Québec), and proceeded to purchase two of such handbags. On approaching the owner of Les Boutiques Sieur De Champlain, Louis Vuitton was advised that such items had been supplied to the store by the Singga Defendants in or about January 2008. In an invoice to Les Boutiques Sieur De Champlain, the Singga Defendants listed the items in question using Louis Vuitton’s famous LV trade-mark.
[28] On or about November 10, 2008 and January 12, 2009, printouts were obtained from the Singga Defendants’ website at <singga.ca>, where the Singga Defendants were offering for sale handbags bearing trade-marks confusingly similar to one or more of the Louis Vuitton Trade-marks and some bearing substantial reproductions of the Louis Vuitton Copyrighted Works. The WhoIs CIRA information for <singga.ca> from September 2009 confirms that such domain name is, and was since at least July 2007, owned and controlled by the Singga Corporation, with Ko as the administrative contact.
[29] In March 2009, an individual employed by the investigation company BCS Investigations arranged a meeting with Ko at the Singga Warehouse. On or about March 9, 2009, the investigator attended at the Singga Warehouse (along with another colleague employed by BCS Investigations). Handbags which bore the Louis Vuitton Trade-marks or trade-marks substantially similar to the Louis Vuitton Trade-marks were observed in the Singga Warehouse, none of which appeared to be authorized merchandise.
[30] A female in attendance at the Singga Warehouse introduced herself to the investigators as “Lisa” (subsequent investigations confirmed such individual to be the Defendant Lam), and began showing merchandise to the investigators, advising that “Kenny” would arrive soon. Lam produced a catalogue showing handbags bearing the Louis Vuitton Trade-marks, some with the Louis Vuitton Copyrighted Works, and other luxury branded goods. Lam advised the investigators that all products were from China, and that Singga had warehouses in Vancouver, Edmonton, Toronto and Halifax.
[31] Ko arrived at the Singga Warehouse with a woman who was introduced as his wife. Ko took over the meeting with the investigators, and provided information on bulk purchases and discounts, implying that he could fill orders for 200-300 items within 45 days by filling such orders in his factory. Ko offered to provide a catalogue (containing over 500 items) and samples of products.
[32] During the attendance at the Singga Warehouse on March 9, 2009, both Ko and Lam admitted to the investigators that the designer handbags in their catalogues were not real, and Ko implied that he attempted to get around trade-mark issues with brand names. Ko advised that he did business across Alberta to Nova Scotia, and attended trade shows in Toronto and Edmonton.
[33] On March 18, 2009, the same BCS investigator visited the Singga Warehouse, and Ko provided several sample handbags to the investigator, including two infringing handbags bearing trade-marks substantially similar to some of the Louis Vuitton Trade-marks. Singga’s model numbers for the infringing handbags both included “LV” at the beginning.
[34] On May 25, 2009, the BCS investigator again attended at the Singga Warehouse to place an order. The investigator originally spoke with Ko’s wife, who advised the investigator she should speak directly with Ko. The investigator subsequently placed a Purchase Order with Ko, which included two “LV” models for which the investigator had previously been provided samples, and Ko advised the models would be ordered. When the investigator asked Ko about the possibility of purchasing “look-a-likes”, Ko advised that he carried Coach, Chanel, Guess, Louis Vuitton and Prada, and also explained to her how they got around Customs with manufacturing tricks on Chanel product. Ko advised that the investigator could send him a picture of look-a-like product, for which he would quote a price and then place an order in China, which would subsequently be delivered to Canada by air.
[35] When the investigator inquired specifically about “Louis Vuitton look-a-likes”, Ko showed the investigator an alleged “real one”, which was a high quality counterfeit handbag bearing one or more of the Louis Vuitton Trade-marks. Ko warned the investigator that such a bag could not be displayed for selling, but sold only to people the investigator knew.
[36] On June 8, 2009, the BCS investigator re-attended the Singga Warehouse, along with a second investigator of BCS Investigations, who was introduced to Ko as a retailer who was interested in “look-a-like” designer handbags. Lam was in attendance at the Singga Warehouse, but only Ko dealt directly with the investigators.
[37] At the request to see “look-a-like” handbags, Ko showed the investigators some purses bearing Chanel and Guess trade-marks, again explaining how the Chanel CC trade-mark was created after bringing it across the border, and acknowledging that he used to import a lot more items three or four years ago, but that more recently it had been more difficult at the border, specifically for “Louis Vuitton” items. Other brand names, including Burberry, were seen in the Singga Warehouse, none of which appeared to be authentic. Ko refused to sell “look-a-like” Louis Vuitton handbags to the new BCS investigator, with whom he had not dealt previously.
[38] Ko met with the first BCS investigator (with whom he had previously had dealings) alone in his office, and provided her with a sample counterfeit handbag and cloth cover bag, bearing one or more of the Louis Vuitton Trade-marks. Ko also provided her with a CD catalogue of products available for purchase from Singga. The CD catalogue contained numerous offerings of counterfeit wallets and handbags bearing one or more of the Louis Vuitton Trade-marks. Ko instructed the investigator not to show either the counterfeit “Louis Vuitton” handbag or the CD/pictures to her colleague.
[39] While Ko met with the first BCS investigator, the second BCS investigator inspected half-way into the back of the Singga Warehouse, and observed approximately 10 to 15 handbags on a shelf bearing the Louis Vuitton Trade-marks or trade-marks substantially similar to the Louis Vuitton Trade-marks, none of which were genuine.
[40] On or about June 19, 2009, Burberry determined that Singga’s website at <singga.ca> was offering for sale handbags bearing one or more of the Burberry Trade-marks. This website also continued to offer for sale handbags bearing trade-marks confusingly similar to one or more of the Louis Vuitton Trade-marks, with substantial reproductions of the Louis Vuitton Copyrighted Works.
[41] On June 22, 2009, the second BCS investigator re-attended the Singga Warehouse with another colleague. The investigator purchased nine handbags from Ko, including several “Louis Vuitton” and “Burberry” handbags, each of which bore one or more of the Louis Vuitton Trade-marks (including labels with Louis Vuitton’s “LV” trade-mark), and/or trade-marks substantially similar thereto, or one or more of the Burberry Trade-marks. The handbags bearing the Burberry Trade-marks were hidden in the back of the warehouse in a box. Ko again dealt directly with the investigators, while Lam was present in the Singga Warehouse. Ko advised the investigators not to display the “look-a-likes”.
[42] Ko agreed to provide the investigators a price quote for 500 purses, and that the minimum for such a bulk order would be 50. Ko indicated he could copy any style from the Louis Vuitton and Burberry websites and he just needed a photograph of the item to be sent to him. Ko advised the investigators that he preferred the eastern market in Canada, including Alberta and Toronto, stating that he had 100 retail customers in Eastern Canada and 120 customers in Alberta. He also stated that he only sold the counterfeits to his “old customers”.
[43] The investigators requested the location of Singga’s warehouse in Alberta, and Ko gave them a piece of paper with the name “PRIME TIME”, and an address, written on it. Ko also invited the investigators to visit Singga’s booth at the Alberta Gift Show in Edmonton.
[44] An investigator from Price Langevin & Associates Inc. of Edmonton, Alberta, went to the 2009 Alberta Gift Show in Edmonton on August 18, 2009 and attended Singga’s booth. Ko was operating the booth. Ko advised the investigator that Singga can only distribute to Alberta and Ontario, and that they could not provide product in British Columbia.
[45] On October 29, 2009 an investigator from the investigation firm IPSA International attended the Singga Warehouse for a prearranged meeting with Ko. Ko took the investigator to an office in the Singga Warehouse, where the investigator observed a counterfeit handbag bearing one or more of the Burberry Trade-marks.
[46] The IPSA investigator inquired about the purchase of “name brand stuff, like LV, Gucci, Burberry, Prada”. Ko advised the investigator that there was a crackdown in China on LV and Burberry, but that he could get it from Guangzhou and confirmed that he could deliver 50-100 bags to Toronto. Ko also advised that he did not keep his bags in the store because it was “dangerous”, and also indicated that he did not trade with “white people”, as he was very cautious and has been caught before. Ko also advised he sold a lot of Burberry before, and that he had previously received a warning letter from LV.
[47] On October 30, 2009, the IPSA investigator subsequently contacted Ko and sent an e-mail to Ko to place an order for 50 “Louis Vuitton” handbags and 50 “Burberry” handbags, which Ko had advised he could make available. Ko sent the investigator an e-mail on October 30, 2009 attaching screen captures from Louis Vuitton’s legitimate website, indicating that he could obtain such items for $25/each.
[48] In mid-November, 2009, Ko ultimately advised the IPSA investigator that he could not fill the order, but directed the investigator to his friend in Toronto, M.Mac of Altec to fill the order locally in Toronto. Ko received a commission on the December 2009 to February 2010 sales of counterfeit items by Altec. The Defendant Liang confirmed that Ko contacted Altec to ensure that Ko would receive a commission prior to referring the IPSA investigator to Altec for the referral orders.
[49] In late February and early March, 2010, another investigator from IPSA e-mailed Singga at [email protected], and corresponded with Lam about purchasing handbags for a new retail store. The investigator attended the Singga Warehouse on March 8, 2010 and met with Lam, as well as Ko and his wife. The investigator was shown a folder that contained several photographs of handbags, including approximately 20 photographs of counterfeit handbags bearing one or more of the Burberry Trade-marks. While Lam and Ko advised that they “no longer sell counterfeit products” and represented to the investigator that the handbags were “not Burberry” and were legal to sell, Lam and Ko proceeded to sell the investigator two counterfeit handbags bearing one or more of the Burberry Trade-marks. At the same time, as outlined below, Counterfeit and/or Infringing Louis Vuitton Items were still being offered for sale by the Singga Defendants through <singga.ca>.
[50] Throughout the investigations conducted into the activities of the Singga Defendants, the Singga Defendants continued to offer for sale and sell Counterfeit and/or Infringing Louis Vuitton Items (including some bearing the Louis Vuitton Copyrighted Works) and Counterfeit and/or Infringing Burberry Items through their websites. Specifically, the Plaintiffs have produced evidence of the following instances of continued offers for sale (all subsequent to the first found instances of November 2008 for Louis Vuitton and June 2009 for Burberry and noted above):
a. For Louis Vuitton:
i. on April 24, 2009, continued offer for sale through their website at <singga.ca>;
ii. on September 16, 2009, continued offer for sale through their website at <singga.ca>;
iii. on February 1, 2010, continued offer for sale through their website at <singga.ca>;
iv. on March 26, 2010, continued offer for sale through their website at <singga.ca>; and
v. on April 22, 2010, continued offer for sale through their website at <singga.ca>.
b. For Burberry:
i. on September 16, 2009, continued offer for sale through their website at <singga.ca>;
ii. on January 28, 2010, continued offer for sale through their website at <singga.ca>; and
iii. on March 2, 2010, continued offer for sale through their website at <singga.com>.
[51] The WhoIs information for <singga.ca> and <singga.com> confirms Singga Corporation as the Registrant (with Ko as the administrative contact) for <singga.ca> (both as of September 2009 and July 2010), and Ko as the Registrant and administrative contact for <singga.com>.
[52] Further, between August 2009 and January 2010, several visits were made by investigators from Price Langevin & Associates Inc. to the business operating as “Prime Time”, a retail store located at Unit 1076 – 9499 137 Avenue, Edmonton, Alberta, which Ko had represented was Singga’s “Alberta Warehouse”. During such visits, Counterfeit and/or Infringing Items were observed and purchased. Specifically, the following observations and purchases were made:
a. on August 13, 2009:
i. observation of approximately 45 counterfeit and infringing necklaces bearing the LV trade-mark and approximately 10 purses bearing one or more of the Louis Vuitton Trade-marks and/or substantially similar trade-marks;
ii. observation of at least seven counterfeit purses bearing one or more of the Burberry Trade-marks;
iii. a purchase of three counterfeit necklaces bearing the LV trade-mark, and two counterfeit purses bearing the Louis Vuitton Trade-marks and/or substantially similar trade-marks; and
iv. a purchase of two counterfeit purses bearing one or more of the Burberry Trade-marks.
b. on October 19, 2009:
i. observation of approximately seven counterfeit handbags that bore one or more of the Burberry Trade-marks;
ii. observation of approximately six counterfeit and infringing handbags that bore one or more of the Louis Vuitton Trade-marks, or substantially similar trade-marks (which were represented to be “Louis Vuitton”);
iii. observation of counterfeit jewelry bearing one or more the Louis Vuitton Trade-marks;
iv. a purchase of one counterfeit handbag bearing the Burberry Trade-marks;
v. a purchase of one counterfeit handbag bearing the Louis Vuitton Trade-marks and/or trade-marks substantially similar to the Louis Vuitton Trade-marks.
c. on January 21, 2010:
i. observation of counterfeit and infringing jewelry and purses bearing the Louis Vuitton Trade-marks, and/or confusingly similar trade-marks;
ii. observation of a counterfeit baseball cap bearing several of the Burberry Trade-marks; and
iii. a purchase of a counterfeit necklace bearing one or more of the Louis Vuitton Trade-marks.
d. on January 29, 2010:
i. a purchase of a counterfeit baseball cap (taken from behind the counter) bearing one or more of the Louis Vuitton Trade-marks; and
ii. a purchase of a counterfeit baseball cap bearing one or more of the Burberry Trade-marks.
[53] Prime Time, on several occasions, refused to provide a sales receipt for the counterfeit and infringing items being purchased, and at least one investigator attending “Prime Time” was told that the counterfeit merchandise was hard for Prime Time to come by. While the business license for Prime Time is owned by a different individual than the Singga Defendants, Ko represented such location as Singga’s warehouse in Alberta. Further, Prime Time was offering for sale and selling products similar to products observed at, and purchased from, the Singga Warehouse, evidencing the more than likely supply of counterfeit merchandise to Prime Time from Singga.
Activities of the Altec Defendants
[54] Since at least as early as August 2009, the Altec Defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold Counterfeit and/or Infringing Louis Vuitton Items in Canada, and specifically counterfeit and infringing handbags, sunglasses, watches, key chains, wallets, necklaces, belts, hair clips, bracelets and earrings, including some bearing unauthorized reproductions of the Louis Vuitton Copyrighted Works. Further, since at least that time, the Altec Defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold Counterfeit and/or Infringing Burberry Items in Canada, and specifically counterfeit and infringing handbags, wallets, scarves, hair accessories, apparel and watches.
[55] Such activities of the Altec Defendants have been carried out over a sustained period of time (and continue to the present), with full knowledge of the Plaintiffs’ respective rights in and to the Louis Vuitton and Burberry Trade-marks and the Louis Vuitton Copyrighted Works. Their activities are large in scale, involving the manufacture and importation of bulk quantities of Counterfeit and/or Infringing Items, and Canada-wide distribution, offer for sale and sale of such items.
[56] As noted above, an investigator from Price Langevin & Associates Inc. went to the 2009 Alberta Gift Show in Edmonton on August 18, 2009. In addition to attending Singga’s booth, the investigator also attended a booth listed as “Altec Productions” offering for sale counterfeit purses bearing one or more of the Louis Vuitton Trade-marks and counterfeit purses bearing one or more of the Burberry Trade-marks.
[57] In November, 2009, Altec Productions was again brought to the attention of the Plaintiffs when, as outlined above, the Defendant Ko referred the IPSA investigator to a “friend” in Toronto to fill an order for 50 “Louis Vuitton” and 50 “Burberry” handbags. As a result of such referral, on November 12, 2009, the IPSA investigator was contacted by phone by M.Mac from “Altec Productions Inc.” (“Altec”), and then received an email from M.Mac on November 13, 2009 indicating Altec’s website of <www.altecproductions.com/main.html>. M.Mac advised the investigator by phone that she would be able to fill the order requested of Singga, but that the product would cost more because Altec would be paying a commission on the order to Ko.
[58] On December 8 and 9, 2009, through several telephone conversations, the IPSA investigator placed an order of 25 “Super A LV” handbags, in various styles. Inquiries were also made at the time about placing an order of 25 “Burberry” handbags. During the ordering process, M.Mac advised that the investigator could simply go to the “LV website” and tell her the model name for ordering. M.Mac also advised that the product would be coming from their factory in China, and that her partner “Gordon”, in China, would be contacting the investigator with the tracking number. During one of the telephone conversations, M.Mac assured the investigator that the shipment would not be searched by customs, and that they “have done it many times”, implying that the shipment would get through customs.
[59] On December 11, 2009, an investigator employed by Eagle Investigations posed as an assistant to the IPSA investigator, and attended the Altec Warehouse to pay for the order of “Louis Vuitton” merchandise. The Eagle investigator met with Liang and R. Mac at the Altec Warehouse, and paid Altec for 25 units of “Louis Vuitton” handbags, at a price of $2,500 total.
[60] At the December 11, 2009 attendance at the Altec Warehouse by the Eagle investigator, the IPSA investigator was contacted by phone and discussed with Liang about “Burberry” samples; the Eagle investigator was then shown a handbag bearing one or more of the Burberry Trade-marks and was also advised by Liang that Altec could provide exact replicas of “Burberry” handbags. The Eagle investigator was also given a sample counterfeit handbag bearing one or more of the Burberry Trade-marks. On December 14, 2009, the IPSA investigator followed up with Liang about the “Burberry” product, and was advised that M.Mac was in China ordering the “Burberry” product. The investigator confirmed that “regular quality” rather than “triple A” would be fine for such “Burberry” product.
[61] During the December 11, 2009 attendance at the Altec Warehouse, Liang represented Altec as the main source for these types of counterfeit goods, and that Altec attended gift shows in Alberta, Toronto and Vancouver. Liang was interested in starting a “supplier to supplier business” with the investigators. Liang advised that for larger quantities, the items would be sent over a period of time in smaller shipments to avoid being detected by customs. Liang also recommended that the investigator continue selling higher quality items, rather than cheap “knock-offs”, as such higher end products appealed to wealthier clients and brought in more money.
[62] In early January, 2010, the Altec Defendants shipped 25 counterfeit handbags bearing the Louis Vuitton Trade-marks, and some with the Louis Vuitton Copyrighted Works, to the investigators.
[63] On January 12, 2010, M.Mac sent an unsolicited e-mail to the investigator offering for sale various apparently counterfeit items including both “lv” (“awesome quality”) and “burberry” items.
[64] On February 7, 2010, the Eagle investigator again attended the Altec Warehouse (at its new location at Unit 16 – 300 Don Park Road, Markham, Ontario), and was shown several styles of counterfeit handbags bearing one or more of the Burberry Trade-marks, which were represented by Liang as being “A standard” quality. Liang proceeded to sell the investigator 25 counterfeit handbags bearing one or more of the Burberry Trade-marks, at a cost of $750.
[65] Liang advised the investigator that another shipment would be arriving at the end of February, and then again at the beginning of March. Liang provided the investigator with a copy of the catalogue of goods sold by Altec, which included the offer for sale of numerous Counterfeit and/or Infringing Items.
[66] As noted previously, Ko received a commission for the above noted substantial sales of counterfeit items by Altec.
[67] On April 7, 2010, the IPSA investigator again contacted Liang, asking to purchase “Louis Vuitton” and “Burberry” product from Altec. Liang requested that the investigator review Altec’s web site at <altecproductions.com> and order product listed there. On April 14, 2010, an order was placed for two wallets bearing several of the Louis Vuitton Trade-marks and one of the Louis Vuitton Copyrighted Works, and one handbag bearing several of the Burberry Trade-marks. Such counterfeit items were shipped to the investigator by Liang on April 15, 2010.
[68] Altec’s distribution of counterfeit items was and is widespread. For example, a third party confirmed that it inadvertently purchased several counterfeit handbags bearing one or more of the Burberry Trade-marks from Altec, through M.Mac, at the Alberta Gift Show in February 2010. Altec also represented on several occasions that its distribution was cross-Canada.
[69] Throughout the above-noted investigations conducted into the activities of the Altec Defendants, the Altec Defendants offered for sale and sold Counterfeit and/or Infringing Louis Vuitton Items (including bearing the Louis Vuitton Copyrighted Works) and Counterfeit and/or Infringing Burberry Items through their website at <altecproductions.com>, with the Plaintiffs having evidence of the following instances of such offers for sale:
a. for Louis Vuitton, on November 13, 2009, January 25 and 26, 2010, March 26, 2010 and July 14, 2010; and
b. for Burberry, on November 13, 2009, January 20 and 29, 2010, March 25, 2010 and July 14, 2010.
[70] The WhoIs information from July, 2010 for <altecproductions.com> shows Altec as the Registrant and Chan as the administrative contact for the domain name.
[71] Subsequent to commencement of these proceedings, Altec registered a new domain name and began offering for sale and selling Counterfeit and/or Infringing Louis Vuitton Items (including bearing the Louis Vuitton Copyrighted Works) and Counterfeit and/or Infringing Burberry Items through their new website at <aporder.com>, with the Plaintiffs having evidence of such offers for sale on September 20, 2010 and December 8 and 9, 2010 (as well as January 11, 2011 and February, 2011).
[72] The domain name <aporder.com> was registered, under an anonymous registrant host, and on September 14, 2010, a short time after being served with the Statement of Claim on this proceeding, the Altec Defendants sent e-mails to existing clients advising of their website <aporder.com>. As late as December 7, 2010, Altec continued to direct customers to the website, which was said to have “new merchandise”.
[73] Subsequent investigations of Altec’s activities wer