Louis Vuitton Malletier S.A. v. Wang

Louis Vuitton Malletier S.A. v. Wang
Court (s) Database
Federal Court Decisions
Date
2019-11-15
Neutral citation
2019 FC 1389
File numbers
T-1887-17
Notes
A correction was made on November 19, 2020.
Decision Content
Date: 20191115
Docket: T-1887-17
Citation: 2019 FC 1389
Ottawa, Ontario, November 15, 2019
PRESENT: The Honourable Mr. Justice Roy
BETWEEN:
LOUIS VUITTON MALLETIER S.A.; LOUIS VUITTON CANADA, INC.; CELINE; CHRISTIAN DIOR COUTURE, S.A.; GIVENCHY S.A.
Plaintiffs
and
AUDREY WANG AKA NINI WANG AKA NI YANG; JOHN DOE AKA “MICHAEL”, CANADA ROYAL IMPORT & EXPORT CO. LTD.; COLLECTIVELY DOING BUSINESS AS NI FASHION, NIYANGBAZZA AND NI BAZZA, AND LIAN TONG COURIER SERVICE
Defendants
AMENDED JUDGMENT AND REASONS
[1] The plaintiffs issued a statement of claim against the defendants on December 6, 2017, alleging a number of infringements of the Trade-marks Act, R.S.C., 1985, c T-13 [the Act] and the Copyright Act, R.S.C., 1985, c C-42. The matter before the Court concerns a motion seeking an order pursuant to rule 216 of the Federal Courts Rules, SOR/98-106, for a summary trial on all of the issues raised in the pleadings.
[2] Such a summary trial is conducted on the basis of the record assembled by the parties which must contain all of the evidence on which the parties rely. The applicants’ motion record runs for close to 4,200 pages while the defendants’ motion record consists of upwards of 900 pages.
[3] None of the numerous affiants for the applicants/plaintiffs was cross-examined on their affidavit, except one, and no order pursuant to rule 216(3) was sought. Accordingly, no viva voce evidence was heard. If there is sufficient evidence for adjudication, the Court may grant judgment either generally or on an issue. The Court was urged by the plaintiffs to adjudicate on all the issues, including damages, as they did not intend to offer different evidence if the Court were to direct “a trial to determine the amount to which the moving party is entitled” (rule 216(7)).
[4] I will review the pleadings to ascertain what is at stake. I will then present the evidence before the Court, both from the perspective of the applicants/plaintiffs and the defendants. Once a better understanding of the evidence has been ascertained, I will consider more fully whether the motion for summary trial is the appropriate vehicle to adjudicate on the matter before the Court. If so, I will then seek to adjudicate on the issues that are ripe for adjudication. However, before delving into the issues, it might be useful to address, as a preliminary issue, what, from a procedural standpoint, is before the Court because of amendments to the pleadings which were granted at the hearing of this case.
I. Preliminary Issue
[5] There have been a number of proceedings in association with the original statement of claim. The same day it was served on the defendants (December 13, 2017), an Anton Piller Order, executed at the residence of Ms. Wang and Mr. Yang (the “Wang residence” or “the residence”) and at the store located at the Parker Place Mall in Richmond, BC, was served. A number of items were seized at both locations. The following day, on December 14, 2017, a Mareva injunction (to prevent dissipation of assets) was granted. Furthermore, a contempt hearing was held on December 19, 2017 (concerning an incident involving Ms. Wang who refused to surrender her mobile telephone in spite of a specific order to that effect in the Anton Piller Order, while the Anton Piller Order was executed at the store). The Anton Piller Order and the Mareva injunction, which this Court refused to dismiss (2018 FC 1198), were continued until final judgment.
[6] Statements of defence were eventually filed: July 20, 2018 for the defendants, Ms. Wang and Mr. Yang, and August 13, 2018, for Canada Royal Import & Export Co. Ltd.
[7] The plaintiffs sought to amend their statement of claim shortly before the trial was to commence. The Court issued on January 30, 2019 an oral order for the purpose of granting the amendment. As is well known, the Court enjoys a significant measure of discretion as “the general rule is that an amendment should be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided, notably, that the allowance would not result in an injustice to the other party not capable of being compensated by an award of costs and that it would serve the interests of justice” (Canderel Ltd. v Canada, [1994] 1 FC 3, at p. 10).
[8] The defendants did not object to the amendments. The proposed amendments did not go to the heart of the case: the defendants are alleged to have sold counterfeit merchandise (Louis Vuitton Trade-marks, Celine Trade-marks, Dior Trade-marks, Givenchy Trade-marks) and to have used some Louis Vuitton Copyrighted Works. The amended statement of claim names the second defendant, Mr. Yang, whose identity was not known at the time the original statement of claim was served and filed. It also adds three trade-marks, two now found at schedule B to this judgment (Celine Trade-marks) and one now found at schedule D to this judgment (Givenchy Trade-marks). The additional trade-marks are those underlined in schedules B and D.
[9] Thus, these amendments were incorporated in the Amended Statement of Claim served and filed on January 31, 2019. The Court proceeded on that basis.
II. The allegations
[10] It is not disputed that the plaintiffs own the trade-marks as presented in schedules A, B, C and D to this judgment, and the validity of the trade-marks is not litigated in this case.
[11] The applicants/plaintiffs each assert that their trade-marks have established a well-known reputation and goodwill in Canada. Each contends that the defendants have imported, offered for sale and sold counterfeit merchandise which bear their trade-marks, or some of them:
a) Louis Vuitton Trade-marks: The allegation is that the Trade-mark violations date back to February 1, 2009 and include not only counterfeit merchandise (referred to as the “counterfeit Louis Vuitton merchandise”), but also merchandise bearing trade-marks likely to be confusingly similar to the Louis Vuitton Trade-marks (referred to as the “infringing Louis Vuitton merchandise”);
b) Celine Trade-marks: the allegation is that the Trade-mark violations involve counterfeit Celine merchandise bearing the Celine Trade-marks;
c) Dior Trade-marks: the allegation is that the Trade-mark violations involve counterfeit Dior merchandise bearing the Dior Trade-mark;
d) Givenchy Trade-marks: the allegation is that the Trade-mark violations involve counterfeit Givenchy merchandise bearing the Givenchy Trade-marks.
[12] The execution of the Anton Piller Order generated allegedly the seizure of:
a) Counterfeit and infringing Louis Vuitton merchandise, together with counterfeit packaging bearing the Louis Vuitton Trade-marks, were allegedly seized at the Wang residence, in Ms. Wang vehicle (as authorized in the Anton Piller Order) and at the Parker Place premises, considered as being the principal store operated by the defendants;
b) Counterfeit Dior merchandise, bearing the Dior trade-marks, were allegedly seized at the Wang residence and at the Parker Place store.
[13] The applicants/plaintiffs allege that since 2009, the alleged importation of counterfeit merchandise has happened every two weeks. The allegation is made on the basis of statements made by Ms. Wang to investigators retained by the applicants/plaintiffs operating undercover. They also contend that documents seized and preserved will help demonstrate such importation every two weeks.
[14] As for the activities conducted by the defendants which may constitute instances of infringements, the applicants/plaintiffs allege a total of 36 instances relating to the importation, offer for sale and sale of counterfeit merchandise. The following list is taken from the notice of motion, as it frames the contours of the evidence to be led at trial with a view to establishing each instance on a balance of probabilities:
(a) On February 1, 2009, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Cloverdale Flea Market;
(b) On March 15, 2009, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Cloverdale Flea Market;
(c) On April 26, 2009, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Cloverdale Flea Market;
(d) On April 8, 2010 offering for sale Counterfeit Louis Vuitton Merchandise at the Parker Place Store, including by way of actual merchandise (taken from a drawer behind a curtained area) and showing Louise Vuitton catalogues for items to be ordered;
(e) On January 9, 2015, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store, including by way of actual merchandise and online and through the use of physical Louis Vuitton catalogues for items to be ordered;
(f) In February and March, 2015, advertising for sale Counterfeit Louis Vuitton Merchandise online at <921nini.blog.163.com> (the “defendants’ website”);
(g) On April 2, 2015, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(h) On April 20, 2015, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(i) On May 13, 2015, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(j) On June 15, 2015, advertising for sale through the defendants’ WeChat Account, each of Counterfeit Louis Vuitton Merchandise, Counterfeit Celine Merchandise and Counterfeit Dior Merchandise;
(k) Also on June 15, 2015, offering for sale Counterfeit Louis Vuitton Merchandise at the Parker Place Store, including by way of actual merchandise and showing a Louis Vuitton catalogue for items to be ordered;
(l) On July 15, 2015, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(m) On August 23, 2016, offering for sale and selling Counterfeit Louis Vuitton Merchandise, both to the investigator and another customer, at the Parker Place Store;
(n) In January, 2017, offering for sale Counterfeit Louis Vuitton Merchandise, Counterfeit Dior Merchandise and Counterfeit Givenchy Merchandise;
(o) On January 31, 2017, offering for sale and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(p) In March and April, 2017, advertising for sale Counterfeit Louis Vuitton Merchandise through the Defendants’ WeChat Account;
(q) On May 12, 2017, offering for sale (from underneath the counter) and selling Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(r) On June 7, 2017, advertising for sale Counterfeit Louis Vuitton Merchandise through the Defendants’ WeChat Account;
(s) On July 11, 2017, offering for sale Counterfeit Louis Vuitton Merchandise at the Richmond Night Market;
(t) On August 11, 2017, offering for sale Counterfeit Louis Vuitton Merchandise at the Parker Place Store;
(u) On September 15, 2017, offering for sale and selling Counterfeit Louis Vuitton Merchandise (stored in plastic bags) at the Richmond Night Market;
(v) On October 29, 2017, advertising for sale through the Defendants’ WeChat Account, each of Counterfeit Celine Merchandise, Counterfeit Dior Merchandise and Counterfeit Givenchy Merchandise;
(w) On November 25, 2017, offering 'for sale Counterfeit Dior Merchandise, Counterfeit Givenchy Merchandise and Counterfeit Celine Merchandise via messaging on the Defendants’ WeChat Account;
(x) On December 4, 2017, advertising for sale Counterfeit Louis Vuitton Merchandise on the Defendants’ Website;
(y) On December 13, 2017, being in possession of significant quantities of Counterfeit Louis Vuitton Merchandise and Counterfeit Dior Merchandise, including associated counterfeit packaging, intended for sale by the Defendants, stored at both the Parker Place Store and the Wang Residence; and
(z) On December 13, 2017, having imported Counterfeit Louis Vuitton and Dior Merchandise, delivered to the Wang Residence.
It is noteworthy that there is no evidence of instances of infringement between May 2010 and December 2014, yet the plaintiffs, through some interpolation, sought damages during that period on the basis of an allegation of an inventory turn-over every two weeks. As I indicated during the hearing, this is not an inference that can be made for a period during which there is a lack of evidence of any level of business activity that could help support such an inference, assuming of course that an inventory turn-over, over and above shipments of merchandise received on a regular basis, can be justified in the circumstances of this case in view of the evidence.
[15] These occurrences, if proven, give rise to violations of various provisions of the Trade-marks Act and the Copyright Act. They are:
(a) S. 19 of the Trade-marks Act: exclusive rights of the four applicants/plaintiffs to their trade-marks;
(b) S. 20 of the Trade-marks Act: for each of the four applicants/plaintiffs, the use made by the defendants is said to be likely to cause the public to believe or infer that the defendants’ wares originate from and are authorized by the four owners of their trade-marks; as such they are deemed to have infringed the exclusive rights in their marks;
(c) S. 22 of the Trade-marks Act: the use made by the defendants of the trade-marks of the four applicants/plaintiffs is likely to depreciate the value of the goodwill attached to the trade-marks;
(d) S. 7(b) of the Trade-marks Act: the defendants are accused of having called public attention to their goods and business in a manner likely to cause confusion in Canada with the goods and business of the four plaintiffs;
(e) S. 7(c) of the Trade-marks Act: the defendants have passed off their goods as and for those of the four plaintiffs;
(f) S. 7(d) Trade-marks Act: the defendants used in association with goods and services a description which is false in a material way and is of a nature to mislead the public concerning the character, quality and composition of those goods and services;
(g) S. 52 of the Competition Act, R.S.C., 1985, c C-34: false and misleading material representations to the public were made by the defendants for the purpose of directly or indirectly promoting the supply or use of their goods and business interests;
(h) Sections 3, 27 and 38.1 of the Copyright Act by infringing the Copyrighted Works owned by Louis Vuitton.
III. The parties
[16] The plaintiffs involved in this litigation are well known and their corporate existence is not disputed. The plaintiffs are:
Louis Vuitton Malletier S.A. is a “société anonyme” existing under the laws of France; Louis Vuitton Canada Inc is a subsidiary of Louis Vuitton Malletier S.A. incorporated under the laws of Canada;
Celine, Dior and Givenchy are all “sociétés anonymes” existing under the laws of France.
As for the defendants, they are:
Audrey Wang, aka Nini Wang, aka Ni Yang, a person who is a director of Canada Royal Import & Export Co. Ltd., and carried business at the Parker Place Mall (principal place of business), the Cloverdale Flea Market and the Richmond Night Market;
Jun Yang, aka Michael Yang, is the spouse of Ms. Wang and he carries business in the same location as his wife, although he argued not to be involved to a great extent in the business activities;
Canada Royal Import and Export Co. Ltd is a company existing under the laws of British Columbia.
The style of cause refers to the defendants as collectively doing business as Ni Fashion, Niyangbazza and Ni Bazza, and Lian Tong Courier Service. For greater certainty, it must be understood that these are not entities constituting defendants.
[17] The four plaintiffs are well known manufacturers of high-end luxury products and they own trade-marks that have been registered in Canada. The trade-marks (see schedules A, B, C, D) are used to identify their products in Canada. The plaintiffs maintain strict quality controls; they have created, developed, manufactured, advertised and marketed their products at great cost in order to convey the highest standards and utmost quality. They have all established a well-known reputation and goodwill: that goodwill is of very high value and of fundamental importance to their overall business.
[18] Louis Vuitton owns the copyright in Canada in what is described as “Multicolored Monogram-White Print” and “Multicolored Monogram-Black Print”. It has the exclusive right to produce and reproduce the artistic works, in whole or in substantive part.
[19] It is alleged that the defendants conducted business out of three locations (Parker Place Mall, Cloverdale Flea Market and Richmond Night Market) as well as websites associated with the domain names <picasaweb.google.com/nifahion08> and <921nini.blog.163.com/album/#m=0&p=1>. Moreover, the defendants are alleged to infringe through the social media platform WeChat, using the nickname “NI BAZZA” and WeChat ID “niyangbazza”.
IV. Summary trial
[20] The first issue that must be addressed is whether or not it is appropriate to proceed with a summary trial in accordance with rule 216 of the Rules of the Federal Courts. The parties agree that if the Court is unable to find the facts necessary to decide the issue, it must decline to rule on the issue. They also agree that if it is unjust to give judgment, the Court must also decline to do so. Indeed, rule 216(6) says that much:
Judgment generally or on issue
Jugement sur l’ensemble des questions ou sur une question en particulier
(6) If the Court is satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, the Court may grant judgment either generally or on an issue, unless the Court is of the opinion that it would be unjust to decide the issues on the motion.
(6) Si la Cour est convaincue de la suffisance de la preuve pour trancher l’affaire, indépendamment des sommes en cause, de la complexité des questions en litige et de l’existence d’une preuve contradictoire, elle peut rendre un jugement sur l’ensemble des questions ou sur une question en particulier à moins qu’elle ne soit d’avis qu’il serait injuste de trancher les questions en litige dans le cadre de la requête.
[21] Summary trials are possible in trade-mark cases. In the context of a motion for summary trial involving trade-mark infringements (Chanel S. de R.L., Chanel Limited and Chanel Inc. v Lam Chan Kee Company Limited et al, 2015 FC 1091 [Lam Chan Kee]), the Federal Court of Appeal (2016 FCA 111) observed:
[16] Here, the trial judge committed no reviewable error in finding that it was unnecessary to hold a trial and hear evidence in order to assess the appellant’s credibility. There was ample basis for the judge to have rejected the appellant’s version of events and to have found that there was no need for a full trial to be held in light of the convincing proof of infringement offered by the respondents’ affiants and the paucity of the appellant’s evidence. It is not simply because a defendant raises an unbelievable defence of denial in response to a motion for summary trial that the motion must be dismissed. Cases like the present, involving ongoing sales of counterfeit goods by a defendant that seeks to put forward a specious defence, are particularly well-suited to being decided by way of summary trial. Thus, the decision of the trial judge to proceed by way of summary trial discloses no reviewable error.
The plaintiffs are right to point out that there have been numerous instances where courts have been able to satisfy the requirements for a summary trial in trade-mark infringement cases. That does not imply, however, that every such case is appropriate as a procedural vehicle.
[22] In the case at bar, there is sufficient evidence for adjudication and it is not unjust to adjudicate on the basis of the written record, although it is quite extensive. In fact, the extensive written record allows the Court to be satisfied it has the evidence sufficient to adjudicate. The instances of infringement alleged by the plaintiffs are based on the evidence in affidavits, together with numerous photographs and other documentary evidence. Most of the affidavits presented by the plaintiffs were not made the subject of cross-examination, thus allowing the Court to draw inferences without having to consider the credibility of witnesses other than through internal contradictions in their testimony. None were detected. As we shall see, that evidence has great probative value given the convincing proof of infringement relative to the limited evidence offered by the defendants and the obvious implausibility of it. As for the one witness who was cross-examined, Ms. Christine Li Zhou evidence is corroborated with respect to some essential elements by the evidence of another witness, Lisa Reid, whose evidence was accepted in its entirety as she was not cross-examined.
[23] The defendants make two submissions regarding the availability of summary trial proceedings. First, they claim that the Mareva injunction executed in this case limited their resources. It is not clear how a trial that would take much longer and require very likely more resources than a summary trial would assist in the context of limited resources. As the Supreme Court noted in Hryniak v Mauldin, 2014 SCC 7, [2014] 1 SCR 87 [Hryniak], the length of civil trials is becoming the enemy of the access to justice because, among many factors, the cost of holding trials becomes prohibitive:
[1] … Ensuring access to justice is the greatest challenge to the rule of law in Canada today. Trials have become increasingly expensive and protracted. Most Canadians cannot afford to sue when they are wronged or defend themselves when they are sued, and cannot afford to go to trial. Without an effective and accessible means of enforcing rights, the rule of law is threatened. Without public adjudication of civil cases, the development of the common law is stunted.
[2] Increasingly, there is recognition that a culture shift is required in order to create an environment promoting timely and affordable access to the civil justice system. This shift entails simplifying pretrial procedures and moving the emphasis away from the conventional trial in favour of proportional procedures tailored to the needs of the particular case. The balance between procedure and access struck by our justice system must come to reflect modern reality and recognize that new models of adjudication can be fair and just.
[3] Summary judgment motions provide one such opportunity. Following the Civil Justice Reform Project: Summary of Findings and Recommendations (2007) (the Osborne Report), Ontario amended the Rules of Civil Procedure, R.R.O. 1990, Reg. 194 (Ontario Rules or Rules) to increase access to justice. This appeal, and its companion, Bruno Appliance and Furniture, Inc. v. Hryniak, 2014 SCC 8, [2014] 1 S.C.R. 126, address the proper interpretation of the amended Rule 20 (summary judgment motion).
Moreover, in this case, submissions in writing were produced on behalf of the corporate defendant by counsel. The submissions in writing of the other two defendants were largely taken verbatim from the submissions of the corporate defendant. The corporate defendant’s counsel was present, together with an associate, throughout the summary trial and, later on, for the damages phase of the case for which counsel produced supplemental written representations. He argued the case for his client. More importantly, the evidence has been fulsome and the defendants have been given every opportunity to present their case. More expenses were not warranted in view of the record presented to the Court.
[24] The second submission relates to the one witness who was submitted to a cross-examination, one Christine Li Zhou. In fact, she was cross-examined extensively by counsel who was representing the corporate defendant as well as Ms. Wang at the time of the cross-examination. Ms. Wang benefited from the cross-examination of counsel and she was able to cross-examine Ms. Li Zhou. The cross-examination lasted more than four hours during which Ms. Li Zhou was asked by counsel and Ms. Wang 512 questions. The second submissions is limited to the view taken by the defendants that Ms. Zhou’s deposition contains inconsistencies and unverifiable assertions. These are in the nature of arguments to be part of submissions on the weight to be given to a testimony. This does not affect the ability to achieve a fair and just adjudication. The Supreme Court devised the following test in Hryniak, at paragraph 4:
[4] … a trial is not required if a summary judgment motion can achieve a fair and just adjudication, if it provides a process that allows the judge to make the necessary findings of fact, apply the law to those facts, and is a proportionate, more expeditious and less expensive means to achieve a just result than going to trial.
[25] It will not be every intellectual property case that would be appropriate for having a summary trial. In the case at bar the plaintiffs’ theory of the case is relatively straight forward, and the evidence that they marshalled was not overly complex. It is, by and large, evidence of alleged instances of infringement. The complexity comes from the abundance of evidence given the theory of the case of the defendants who claims not being involved in selling counterfeit merchandise. As we shall see, it is a hard argument to make in the face of considerable evidence that was not even challenged through cross-examination. The defendants participated fully in the process, with the assistance of counsel. The motion for summary trial is an appropriate procedural vehicle in view of the evidence and the issues raised. I have not been persuaded by the defendants that a summary trial is not appropriate in the circumstances of this case. It constitutes a means to achieve a just result through a fair process of adjudication, being more expeditious and less expensive than going to trial.
V. The evidence
[26] The evidence for the plaintiffs in this case comes in the form of affidavits of 17 persons, most of whom were involved in the investigation and the execution of court orders. Except for one investigator who was cross-examined, no other affiant was submitted to cross-examination by the defendants. Together, they were involved in a rather large number of instances, 36 in total, that are alleged to be instances of infringement. The Court has reviewed each and every one of those affidavits as well as the abundant documentary evidence.
A. Ms. Jana Checa Chong
[27] The investigators’ affidavits were supplemented by the affidavit of Ms. Jana Checa Chong, a senior Intellectual Property counsel for Louis Vuitton North America, operating out of New York. Since plaintiffs Dior S.A., Celine and Givenchy S.A. are all part of a group of companies which include Louis Vuitton Malletier S.A. and Louis Vuitton Canada, Inc (LVMH Moët Hennessy Louis Vuitton SE), Ms. Checa Chong was able to testify concerning the products of the four plaintiffs in order to identify authentic and counterfeit merchandise. In other words the witness can distinguish between authorized products which bear the marks of the four plaintiffs and unauthorized merchandise bearing those marks.
[28] Thus, she testifies that she reviewed the affidavits of the six investigators and confirms that the counterfeit exhibits are all counterfeit items. In order to do so, she identifies features that allow her to conclude that merchandise is counterfeit:
The materials and craftsmanship of the products shown in the Counterfeit Exhibits are not consistent with those of genuine Louis Vuitton products;
The packaging is not consistent with that of genuine Louis Vuitton products;
The care cards are not consistent genuine Louis Vuitton products;
The interior lining is not consistent with that of genuine Louis Vuitton products;
The hardware is not consistent with that of genuine Louis Vuitton products;
The production code is not consistent with that of genuine Louis Vuitton products.
[29] The witness also testified about merchandise seized as part of the execution of the Anton Piller Order on December 13 and merchandise delivered to the Wang residence during the execution of the Anton Piller Order. The items delivered to the residence are found to be “not genuine”: the witness lists the products’ characteristics that made her reach the conclusion. As for the items seized through the execution of the Anton Piller Order, the witness states that the quality of photographs of items she received was not always sufficient to allow her to conclude. Accordingly, 21 items were shipped to her in New York. They are mostly Louis Vuitton items. The physical inspection made her conclude that 19 of the 21 items were not genuine, while two were. They are two Louis Vuitton bags. The fact that she concluded that some items were genuine enhances her credibility. At any rate, she was not even cross-examined by the defendants.
[30] Ms. Checa Chong examined the “packaging photographs” taken from the seizure conducted during the execution of the Anton Piller Order. They are packaging, labelling, hand ware and other similar items. She concluded that they too are not genuine. The same is said of catalogues seized at the same time. In her view, the photographs of the catalogues depict counterfeit catalogues. She said at paragraph 61 of her affidavit that “(t)he catalogues show in the “catalogue photographs” are not authorized, printed, manufactured or distributed by or on behalf of Louis Vuitton, and show advertisement of items bearing one or more of the LOUIS VUITTON trademarks”. This of course is evidence of how significant an operation is run by the defendants that they would have in their possession not only counterfeit items as well as counterfeit packaging, but they also had counterfeit catalogues of products.
[31] The activities depicted in the investigators’ affidavits and in relation to the various counterfeit items seized as part of the execution of the Anton Piller Order “may lead the public to believe that the counterfeit merchandise sold by the Defendants are authentic [plaintiffs’ products] or have ben authorized, approved or manufactured by [the plaintiffs], and are likely to lead to confusion between the Defendants’ goods and the goods and business of [the plaintiffs]” (affidavit of Jana Checa Chong, para 63).
[32] The witness also offers evidence about the damage done to the brands through the offer for sale of counterfeit merchandise. Consumers who purchase, or who would be inclined to purchase the plaintiffs’ products will no longer do so in view of the availability of counterfeit products in the market place. In support of that common sense observation, the witness even produces a report commissioned by the Business Action to Stop Counterfeiting and Piracy, of the International Chamber of Commerce, and the International Trademark Association. The Report, which is close to 60 pages long, seeks to establish “the “enormous” drain that counterfeit and pirated products have on the global economy, affecting billions in the legitimate economic activity, dislocating hundreds of thousands of legitimate jobs and exposing consumers to dangerous and ineffective products” (affidavit of Jana Checa Chong, para 66). In fact, the report projects astronomical numbers. The report commissioned in 2015 “forecast that the value of trade in counterfeit and pirated goods could reach $991 billion by 2022” (page 54). Even if one were to discount the figures as being somewhat inflated as they assume growth rates, there is no doubt that counterfeiting and piracy are significant problems.
B. The investigators
[33] The plaintiffs offered the evidence of six investigators who testified as to their involvement with the defendants, each documenting instances of infringement of the trade-marks of the plaintiffs. These witnesses are Brian Lambie, Lisa Low, Jasper Smith, Lisa Reid, Rojen Nouri and Christine Li Zhou. Only the evidence of Christine Li Zhou was made the subject of contestation.
(1) Brian Lambie
[34] As with respect to the other investigators, Brian Lambie asserts having been trained to identify counterfeit and authentic merchandise with respect to a number of brands, including Louis Vuitton. That was not challenged. He testifies that in late December 2008, Ms. Wang and Royal Import & Export Co., Ltd came to his attention as allegedly selling counterfeit merchandise at the Parker Place Mall and the Cloverdale Flea Market. Mr. Lambie observed Ms. Wang offering for sale counterfeit Louis Vuitton merchandise. He purchased one item for $35 on March 15, 2009 at the Cloverdale Flea Market. On March 22, 2009, a cease and desist letter was served on Ms. Wang. The cease and desist letter was very explicit. I note that Mr. Lambie testified that while he was waiting for Ms. Wang to unload merchandise from her vehicle, an announcement over the PA system warned vendors not to sell counterfeit merchandise. Ms. Wang quickly disappeared only to come back 25 minutes later.
[35] Upon being served with the cease and desist letter, Ms. Wang surrendered three shoes bearing the Chanel Trade-marks. No other counterfeit merchandise was at the stall at that time.
[36] Mr. Lambie observed Ms. Wang selling counterfeit merchandise one month after having been served with the cease and desist letter. On April 26, 2009, Ms. Wang was seen showing boxes, hidden in a bag under a table, at the Cloverdale Flea Market. The boxes bore the Louis Vuitton Trade-marks. The investigator or other investigators observed on May 19, 2019 (Parker Place Mall), on June 20, 2009 (Richmond Night Market) and October 25, 2009 (Cloverdale Flea Market) Ms. Wang selling counterfeit merchandise; however the investigator cannot attest whether such merchandise bore Louis Vuitton Trade-marks.
[37] The rest of Mr. Lambie’s affidavit describes surveillance conducted by him and other investigators showing clearly the involvement of Mr. Yang on the premises used by Ms. Wang at the Parker Place Mall and the Richmond Night Market on September 15 and 16, 2017.
(2) Lisa Low
[38] Lisa Low attests that she is capable of differentiating counterfeit from authentic Louis Vuitton merchandise. She testifies that on February 1, 2009, she observed Ms. Wang offering for sale and selling purses, wallet, shoes, jewellery, sunglasses and jeans, some of which bore Louis Vuitton Trade-mark at the Cloverdale Flea Market. Based on her training and experience, she testifies that the Louis Vuitton merchandise offered for sale were counterfeit. The investigator purchased a Louis Vuitton wallet for $55. The purses on display were offered at prices ranging from $180 to $280. Ms. Wang told the investigator that her products were of a “higher quality”; she advised the investigator that she could order merchandise to purchase, “anything with a style number”. She even had a catalogue on the table (although it was not a Louis Vuitton catalogue). The photographs taken from screen captures of a video made by Ms. Low, of the person Lisa Low met on that occasion are those of the defendant, Ms. Wang.
[39] A business card obtained from Ms. Wang identifies her as Audrey Wang, Managing Director of Canada Royal Import & Export Co. Ltd, and refers to the telephone number she used, an email presented as “[email protected]” and two websites : “921nini.blog.163.com/album” and “picasaweb.google.com/nifashion08”
(3) Jasper Smith
[40] Jasper Smith is another private investigator who has been trained to identify counterfeit and authentic Louis Vuitton merchandise. Mr. Smith was involved in the surveillance conducted on the two defendants on September 15 and 16, 2017. This constitutes corroboration of the testimony of Brian Lambie. Furthermore, he testified about a visit to the Parker Place store operated by the defendants done by another investigator, Lisa Leung, who worked for him at the time. On April 8, 2009, that investigator met a person named “Joyce” who worked on a part time basis for the owner, a person named “Audrey”. No Louis Vuitton merchandise was on display at the store. But “Joyce” advised the investigator that there were two handbags she had, which she retrieved from a drawer behind a curtained area. Ms. Leung purchased the two bags for $390 and $420: photographs of the bags, as well as a receipt are appended to the affidavit. They are a brown monogram handbag and a white multicolor handbag. Furthermore, “Joyce” showed the investigator 2009 and 2010 Louis Vuitton catalogues, stating that orders can be placed, with shipments being made every week from a manufacturer in China; an order could be filled in two weeks. She ordered one handbag which arrived on April 27 and was picked up on April 30, 2009.
[41] Mr. Smith also testified on surveillance he conducted in September 2017. The surveillance produced observations by the investigator of activities of Ms. Wang and Mr. Yang transporting a large vinyl bag. They drove to the Richmond Night Market, but only Ms. Wang left the Night Market to go back to the Parker Place Mall. Ms. Wang then left the Parker Place Mall with two bags to go back to the Night Market. A few hours later, both Ms. Wang and her husband left together to go back to the Wang residence. This suggests that Mr. Yang was left by himself at the Richmond Night Market for a few hours.
[42] The day after (Sept. 16), Ms. Wang and Mr. Yang left their residence together in one car to go to the Parker Place Mall, carrying a large bag, which was removed by Mr. Yang once at the Mall. Later that day, M. Wang and Mr. Yang were seen driving to the Richmond Night Market, with a smaller bag having been put into the trunk of the car. Late that night, they left the Night Market together.
[43] This surveillance of Ms. Wang and Mr. Yang tends to show the joint activities of the two defendants.
(4) Lisa Reid
[44] Lisa Reid is another investigator who was involved in this investigation. She was trained in the recognition of counterfeit merchandise bearing the plaintiffs’ trade-marks. She attended the Parker Place Mall store on January 9, 2015, where she met with Ms. Wang. Ms. Reid perused some large magazines that included Louis Vuitton merchandise, together with a digital magazine. Returning shortly thereafter, the investigator purchased a Louis Vuitton handbag and a Louis Vuitton wallet for a total amount of $350. The investigator was then shown a box containing numerous items, including Louis Vuitton items. All of these were counterfeit merchandise according to the investigator. Upon leaving the store, Audrey Wang provided the investigator with her business card which clearly identifies her. It is the same business card as that given to investigator Lisa Low six years earlier, in February 2009.
[45] The investigation continued. In February and March 2015, the investigator testifies about online offerings of counterfeit Louis Vuitton merchandise. The websites were associated with domain names appearing on Ms. Wang’s business card. Contact was kept with Ms. Wang who invited through an exchange of text messages Ms. Reid to come into her store to order products. During a visit on April 2, 2015, the investigator placed an order, using a Louis Vuitton catalogue. A purse was purchased on site for $235. As confirmed by Ms. Checa Chong, the item is a counterfeit. The investigator placed an order for a Louis Vuitton catalogue and four Louis Vuitton items (total of $1,450). Ms. Wang provided Ms. Reid with a handwritten note where were written her personal and business WeChat account (“niyangbazza”). During the April 2 visit, Ms. Reid conveyed to Ms. Wang her intention of setting up her own store. She was advised by Ms. Wang that she