Louis Vuitton Malletier v. Waleed Bani Torf and al

Louis Vuitton Malletier S.A. v. Torf
Court (s) Database
Federal Court Decisions
Date
2024-07-23
Neutral citation
2024 FC 1152
File numbers
T-1856-23
Decision Content
Date: 20240723
Docket: T-1856-23
Citation: 2024 FC 1152
Ottawa, Ontario, July 23, 2024
PRESENT: Mr. Justice McHaffie
BETWEEN:
LOUIS VUITTON MALLETIER S.A.;
AND LOUIS VUITTON CANADA, INC.
Plaintiffs
and
WALEED BANI TORF, ALSO KNOWN AS VALID BANI TORF, WALEED BT, WALEED B, WALEED TORF AND WALAD TORF;
MOHAMMED BANI TORF, ALSO KNOWN AS MOHAMMAD BANI TORF, MOHAMMED TORF, MO BANI TORF;
KHALED BANI TORF, ALSO KNOWN AS KHALED TORF;
ALHAKAM BAHAALDIN BRIFCANY, ALSO KNOWN AS ALHAKAM BRIFCANY, ALHAKAM KURDI BRIFCANY, HAKAM KURDI AND HAKAM KURDY;
BAHA ALTAYEB BRIFCANY, ALSO KNOWN AS BAHA ALTAYEB BRAFCANY, TAYEB BRIFCANY, AND TAYEB KURDI;
BAHAALDIN AHMAD BRIFCANY, ALSO KNOWN AS BAHAALDIN A. BRIFCANY AND BAHAALDIN BRIFCANY; VIVO ROSA INC.; CANADIAN MADMAC INC.; AND
AZIZ BANI TORF
Defendants
JUDGMENT AND REASONS
I. Overview [1] There is no question that some of the defendants in this action were involved in the sale of counterfeit goods bearing trademarks and a copyright design owned by Louis Vuitton Malletier SA [Louis Vuitton Malletier]. The disputed questions on this motion for summary trial are whether all of the defendants are liable for the damages arising from the trademark and copyright infringement, and what damages and/or punitive damages ought to be awarded.
[2] Louis Vuitton Malletier and its exclusive Canadian distributor, Louis Vuitton Canada, Inc [Louis Vuitton Canada, and collectively Louis Vuitton] argue that all of the defendants are jointly and severally liable, and that damages ought to be assessed at $559,000 plus a punitive damages award of $250,000. The defendants argue that only Alhakam Brifcany should be found liable, and that damages should be limited to $20,000, with no punitive damages.
[3] For the reasons below, I find that Louis Vuitton has demonstrated that Alhakam Brifcany, Mohammed Bani Torf, Waleed Bani Torf, Canadian Madmac Inc [Canadian Madmac] and Vivo Rosa Inc [Vivo Rosa] are liable for violations of the Trademarks Act, RSC 1985, c T-13, and the Copyright Act, RSC 1985, c C‑42. I find that Alhakam Brifcany and Canadian Madmac are liable for damages in the total amount of $110,750, and that Mohammed Bani Torf, Waleed Bani Torf, and Vivo Rosa are jointly and severally liable for $105,500 of this total. I also conclude that this is an appropriate case to award punitive damages of $100,000 against Alhakam Brifcany and Canadian Madmac jointly and severally, and punitive damages of $50,000 each against Mohammed Bani Torf and Waleed Bani Torf, for which amounts Vivo Rosa shall also be jointly and severally liable.
[4] The motion for summary trial and the action are therefore granted in part, for the reasons and on the terms set out in further detail below.
II. Issues [5] Louis Vuitton’s motion for summary trial raises the following issues:
Is this an appropriate case for summary trial?
Has Louis Vuitton met its onus to establish one or more violations of the Trademarks Act and/or the Copyright Act?
Has Louis Vuitton met its onus to demonstrate that each of the defendants is liable for those violations?
If so, what remedies are appropriate, including damages and/or punitive damages?
[6] The first two of these questions are not materially contested by the defendants, so I will address them only briefly before focusing on the final two questions.
III. Analysis A. Summary Trial [7] Rule 216(6) of the Federal Courts Rules, SOR/98-106, provides that the Court may grant judgment on an action in whole or in part upon summary trial if satisfied that there is “sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence,” unless the Court considers that it would be unjust to decide the issues. Conversely, Rule 216(5) provides that the Court shall dismiss a motion for summary trial if the issues raised are not suitable for summary trial or if it would not assist in the efficient resolution of the action.
[8] As with all rules, the rules governing summary trial are to be interpreted and applied so as to secure the just, most expeditious and least expensive outcome of the proceeding, with consideration being given to the principle of proportionality: Federal Courts Rules, Rule 3; Viiv Healthcare Company v Gilead Sciences Canada, Inc, 2021 FCA 122 at paras 35–42, citing, among others, Tremblay v Orio Canada Inc, 2013 FC 109 at para 24. Relevant factors to consider include the complexity of the matter, its urgency, the amounts at stake, the potential cost of conventional trial and the time and cost of summary trial, whether the summary trial will risk wasting time and effort, and whether it will dispose of the entirety of the matter or risk “litigating in slices”: Tremblay at para 24; Alberta v Canadian Copyright Licensing Agency (Access Copyright), 2024 FC 292 at paras 147–149. The reference in Rule 216(6) to “conflicting evidence” confirms that summary trial may be appropriate even if there are credibility issues to be decided, where there is sufficient evidence to determine the matter and the circumstances are such that deciding the matter through summary trial will not be unjust: Chanel S de RL v Lam Chan Kee Company Ltd, 2015 FC 1091 [Lam Chan Kee #1] at para 5; rev’d but aff’d on this point, Kwan Lam v Chanel S de RL, 2016 FCA 111 [Kwan Lam #1] at para 16.
[9] In the present case, the defendants do not dispute that the matter is an appropriate one for summary trial. This is a relevant factor supporting determination of the matter by summary trial, as the Court will be reluctant to require parties who are content to proceed by summary trial to incur the cost and delay of a full trial: Alberta at para 150; Tremblay at para 26.
[10] The parties have filed affidavits and the defendants have been cross-examined. There is sufficient evidence for adjudication. Although issues of credibility are raised, I am satisfied, in light of the evidence before me, the parties’ positions, the nature of the matter, and the issues and amounts at stake, that it would not be unjust to determine the matter by way of summary trial.
B. Violations of the Trademarks Act and the Copyright Act (1) Overview of the evidence filed on this summary trial [11] Louis Vuitton filed extensive evidence in support of its allegations of infringement. This evidence was presented through 26 affidavits from 14 witnesses. The witnesses included nine private investigators involved in Louis Vuitton’s investigation of counterfeit sales. Affidavits were also provided by two lawyers, Ms. May M. Cheng and Ms. Jennifer Ko, who acted as Independent Supervising Solicitors in the service and execution of an Anton Piller Order issued by this Court on September 12, 2023. Ms. Jana Checa Chong, Senior Intellectual Property Counsel for the North American Division of Louis Vuitton Malletier, provided three affidavits with respect to the trademarks, copyright, and business of Louis Vuitton; the counterfeit goods at issue; and the harm arising both from counterfeiting generally and from the counterfeit goods at issue. The remaining affidavits came from a paralegal, Ms. Amy L. Jobson, and a law clerk and e-Discovery & Litigation Case Manager, Ms. Cathy Stallone, both with counsel for Louis Vuitton. None of Louis Vuitton’s witnesses was cross-examined.
[12] Each of the seven personal defendants also swore an affidavit. The personal defendants are members of two families. Given that they share surnames, I will adopt the defendants’ approach of referring to them by their first names for clarity, without meaning any disrespect in doing so. Mohammed Bani Torf [Mohammed], Waleed Bani Torf [Waleed], and Aziz Bani Torf [Aziz] are brothers who are sons of Khaled Bani Torf [Khaled]. Alhakam Bahaaldin Brifcany [Hakam] and Baha Altayeb Brafcany [Tayeb] are brothers who are sons of Bahaaldin Ahmad Brifcany [Bahaaldin]. Mohammed and Hakam met in college, and the other brothers ultimately met each other through this connection. Each of the defendants’ affiants was cross-examined. The transcripts of those cross-examinations, together with responses to undertakings that were given during those cross-examinations, were filed.
[13] In addition to the individual defendants, there are two corporate defendants. Canadian Madmac is an Ontario company associated with the Brifcany family, incorporated in 2014. Hakam is listed in the company’s corporate profile report as its sole director, and as General Manager and President, while Bahaaldin is also listed as President. Canadian Madmac was originally set up by Bahaaldin, Hakam, and Tayeb as a property management business; it was also used for Hakam’s cleaning and sanitizing business, and Tayeb’s construction business. Hakam’s affidavit was presented on behalf of both himself and Canadian Madmac.
[14] Vivo Rosa is an Ontario company associated with the Bani Torf family, incorporated in 2017. Khaled and Mohammed are listed in a corporate profile report as its directors, with Khaled also listed as General Manager and Mohammed as President. The Vivo Rosa business was run by Mohammed and Waleed, selling shoes and accessories branded with the trademark VIVO ROSA. The business had retail stores in the Eaton Centre and on Queen Street in Toronto until the onset of the COVID-19 pandemic. Mohammed’s affidavit was presented on behalf of both himself and Vivo Rosa.
(2) The underlying facts: sales of counterfeit Louis Vuitton goods [15] This matter relates primarily to activities online and at a warehouse location on Cawthra Road in Mississauga, Ontario. Mohammed, Waleed and Aziz’s father, Khaled, had initially leased two neighbouring and connected units at Cawthra Road, Units 23 and 24, for another business interest. When Khaled was refused entry to Canada in around October 2019, Mohammed and Waleed took over the units. They hired Hakam and Tayeb to build a drywall partition between Units 23 and 24. They then used Unit 23 as a warehouse for the Vivo Rosa business, and rented Unit 24 to another unrelated business. After Mohammed and Waleed closed the Vivo Rosa retail stores in 2020, they moved their stock into Unit 23, operating it as an online and warehouse pickup business. This led to the creation of an Instagram handle associated with the warehouse business, <@vivo.warehouse>. The unrelated business moved out of Unit 24 in the spring of 2021.
[16] In August 2021, Louis Vuitton retained private investigators to investigate a “pop-up” store at the Cawthra Road location, advertised by an entity operating as “Fnomenal” or “ShopFnomenal.” The evidence indicates that ShopFnomenal is associated with an individual named Lisa Waisglass, who the defendants referred to simply as “Lisa.” Ms. Waisglass is not a defendant in this proceeding and did not give evidence.
[17] Louis Vuitton’s investigation led to a visit by investigators on August 28, 2021, to the pop-up shop, which was being held at Unit 24 of the Cawthra Road location. Various designer goods including counterfeit Louis Vuitton merchandise were being sold.
[18] A parallel investigation on behalf of Chanel Limited and Chanel Inc [Chanel] had also led to a visit to the same pop-up shop by a different investigator two days earlier, on August 26, 2021. Both investigators noted that Units 23 and 24 were connected, with one unit containing Vivo Rosa branded shoes, and the other being used for the pop-up shop selling counterfeit goods. Although there is some inconsistency in the investigators’ evidence on this front, the preponderance of the evidence indicates that Unit 23 contained the Vivo Rosa shoes, while Unit 24 was used for the display and sale of counterfeit goods.
[19] Louis Vuitton’s investigation continued through the remainder of 2021 and through 2022, with investigators reviewing online advertising, communicating with individual defendants, and attending at the Cawthra Road premises on various occasions to purchase samples of the counterfeit goods being offered. These included visits to the Cawthra Road premises and associated purchases of counterfeit Louis Vuitton goods on October 25, 2021 and February 26, 2022.
[20] In the summer of 2022, management of the Cawthra Road location did not renew Vivo Rosa’s lease for Units 23 and 24, and Vivo Rosa moved out. Thereafter, the counterfeit business continued at Unit 75, an upstairs unit at the same Cawthra Road address. Investigators visited Unit 75 and made a further purchase of counterfeit Louis Vuitton goods on October 15, 2022.
[21] On December 20, 2022, Louis Vuitton delivered a cease and desist letter addressed to Vivo Rosa, to the attention of Mohammed, Khaled, and Hakam. The letter was served personally at Unit 75 of the Cawthra Road location through two private investigators. Hakam, Waleed, and Aziz were present. The letter identified and asserted Louis Vuitton’s rights in its common law and registered trademarks. It set out Louis Vuitton’s knowledge of the defendants’ online and warehouse activities, and demanded that they immediately cease any further distribution and sale of counterfeit Louis Vuitton merchandise, and deliver up all counterfeit Louis Vuitton merchandise in their possession or control.
[22] This did not happen. Further investigations revealed that online advertising and sales at Unit 75 of the Cawthra Road location continued during 2023. Investigators arranged further visits to the Unit 75 location in March, May, and August 2023, again making purchases of counterfeit Louis Vuitton goods on each occasion. These investigations also revealed another nearby warehouse address on Tedlo Street.
[23] On September 6, 2023, Louis Vuitton commenced this action, and filed a motion ex parte seeking an Anton Piller Order and a Mareva Order. These were granted by Justice Pallotta on September 12, 2023, based on some of the same affidavits filed on this summary trial. The Anton Piller Order required the defendants, and anyone appearing to be in charge of Units 23, 24, and 75 of the Cawthra Road premises and the Tedlo Street premises, to permit entry to those authorized by the Order for the purpose of searching for, identifying, and removing evidence, including merchandise bearing any of the “LOUIS VUITTON Trademarks” (a term defined in the Statement of Claim to cover 39 registered trademarks, including the trademark LOUIS VUITTON and other word and design marks owned by Louis Vuitton Malletier). It also enjoined the defendants from importing, selling, or distributing products that infringe the LOUIS VUITTON Trademarks.
[24] The following day, September 13, 2023, the Anton Piller Order was executed at Unit 75 of the Cawthra Road location under the supervision of Ms. Cheng, acting as Independent Supervising Solicitor. Hakam was present and received a partial explanation of the Anton Piller Order, but left before the explanation was finished. The location was searched and almost 500 items of counterfeit Louis Vuitton merchandise were seized, including bags, shoes, wallets, scarves, and other clothing items, in addition to packaging bearing the trademark LOUIS VUITTON. Certain documents were also seized.
[25] Also on September 13, 2023, efforts were made to execute the Anton Piller Order at the Tedlo Street location. However, an individual at that location refused entry and service of the Order on several occasions. That evening, Waleed contacted Louis Vuitton’s counsel, indicating a desire to co-operate in the execution of the Anton Piller Order at the Tedlo Street location.
[26] Ms. Cheng supervised the execution of the Anton Piller Order at the Tedlo Street premises on September 14, 2023, with Waleed present. The search revealed empty boxes bearing the trademark LOUIS VUITTON, but no merchandise. Waleed also invited the search team to search his house and garage on a voluntary basis, but this revealed no further goods bearing Louis Vuitton trademarks. Aziz was also present at the search of the garage.
[27] The Anton Piller Order was not executed at Units 23 and 24 of the Cawthra Road location, which were no longer associated with the defendants.
[28] On September 25, 2023, Justice Pallotta extended and continued the Anton Piller Order and the Mareva Order, and granted Louis Vuitton’s request to add Aziz as a defendant to the Statement of Claim. Louis Vuitton’s motion seeking review of the execution of the Anton Piller Order was adjourned. On November 3, 2023, on consent of the parties, Justice Pallotta further extended and continued the Anton Piller Order and the Mareva Order, and noted that the parties had advised that the review motion was no longer required. The defendants did not and do not challenge the execution of the Anton Piller Order.
[29] Despite the execution of the Anton Piller Order, a subsequent investigation revealed that Hakam continued to sell counterfeit items through an Instagram account. During an investigation apparently linked primarily to other brands, an investigator asked Hakam if he had any Louis Vuitton merchandise. This ultimately led to a further sale of a counterfeit Louis Vuitton bag in January/February 2024.
(3) Louis Vuitton has established violations of the Trademarks Act [30] Through the uncontested affidavits of Ms. Jobson and Ms. Checa Chong, Louis Vuitton has established that Louis Vuitton Malletier is the registered owner in Canada of numerous trademarks, including multiple registrations for the trademarks LOUIS VUITTON (notably, TMA557,173 and TMA288,667); LV DESSIN (notably, TMA557,176 and TMA287,463); and TOILE DAMIER DESSIN (notably, TMA550,893 and TMA492,021). Louis Vuitton Malletier’s trademarks also include a number of other design marks, including TOILE MONOGRAM (DESSIN), TMA557,200; TOILE MONOGRAM NsurB (LV & DESSIN), TMA960,128; LV & DESSIN, TMA352,916; and different flower or floral designs (TMA671,117; TMA671,118; TMA678,565; TMA692,843; TMA401,088). I will refer to these trademarks collectively as the Louis Vuitton trademarks. Ms. Checa Chong’s affidavit also demonstrates ownership of a number of other trademarks that are defined in her affidavit and in the Statement of Claim as being among the “LOUIS VUITTON Trademarks,” but about which there is no evidence of infringement in this case (such as the trademarks MACASSAR, MAHINA, NEVERFULL, and DANS LA PEAU).
[31] I note that Ms. Checa Chong’s affidavit states that “Louis Vuitton”—a term she defines as meaning Louis Vuitton Malletier and Louis Vuitton Canada collectively—owns and has registered the trademarks. However, the trademark registrations clearly identify Louis Vuitton Malletier as the sole registered owner of the trademarks. I therefore take Ms. Checa Chong’s reference to “Louis Vuitton” as meaning Louis Vuitton Malletier. This is also the only interpretation that makes sense of her statement that “Louis Vuitton Canada is wholly owned by Louis Vuitton.”
[32] The defendants do not contest Louis Vuitton Malletier’s ownership of the Louis Vuitton trademarks. Nor do they contest Louis Vuitton’s allegations that the sale of non-genuine Louis Vuitton products bearing one or more of the trademarks constitutes infringement contrary to sections 19 and 20 of the Trademarks Act; depreciation of goodwill contrary to section 22 of the Trademarks Act; passing off contrary to paragraph 7(b) of the Trademarks Act; passing off by substitution contrary to paragraph 7(c) of the Trademarks Act; and/or use of a materially false description likely to mislead the public as to the character, quality, or composition of the products, contrary to paragraph 7(d) of the Trademarks Act.
[33] Given the defendants’ concessions and the nature of the conduct, I need not engage in an extensive analysis of these provisions. Suffice it to say that I am satisfied on the basis of the evidence presented that Louis Vuitton has established the existence of significant goodwill in the various Louis Vuitton trademarks; that Louis Vuitton Malletier owns common law and registered rights in the trademarks; that the merchandise had identical copies of the trademarks marked on them and/or on the packages in which they were distributed; that the trademarks were used in connection with the counterfeit goods; and that Louis Vuitton did not authorize any of the defendants to import, sell, or offer for sale goods bearing one or more of the Louis Vuitton trademarks.
[34] The trademarks used in the counterfeiting business are identical or effectively identical to the Louis Vuitton trademarks, and are being used on exactly the same types of goods. The Louis Vuitton trademarks are inherently distinctive and have acquired distinctiveness through use and advertising. Based on the trademark registrations, the Louis Vuitton trademarks have been in use for a lengthy period of time. Given these factors and the nature of both Louis Vuitton’s trade and that of the counterfeiting business, I find that the use of the trademarks on the counterfeit goods was likely to cause confusion with the Louis Vuitton trademarks and would thereby deceive the public: Trademarks Act, ss 2 (“confusing,” “trademark”), 4(1), 6(1), (2), (5); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at paras 18–27; Kirkbi AG v Ritvik Holdings Inc, 2005 SCC 65 at paras 66–68; Sadhu Singh Hamdard Trust v Navsun Holdings Ltd, 2019 FCA 295 [Hamdard Trust] at paras 38–39, 41–48; Louis Vuitton Malletier SA v Singga Enterprises (Canada) Inc, 2011 FC 776 [Singga] at paras 100–108. I therefore conclude that Louis Vuitton has established infringement of the registered Louis Vuitton trademarks and passing off contrary to sections 7(b), 19, and 20 of the Trademarks Act.
[35] I also find that supplying counterfeit goods in place of genuine Louis Vuitton goods, including in particular response to requests by investigators for Louis Vuitton goods, amounts to passing off the counterfeit goods as and for Louis Vuitton goods ordered or requested, and that Louis Vuitton has established passing off by substitution, contrary to paragraph 7(c) of the Trademarks Act: Distrimic Inc v Dispill Inc, 2006 FC 1229 at paras 67–68; Singga at paras 105–108. The evidence regarding the nature and quality of the counterfeit goods compared to those of genuine Louis Vuitton products also leads me to conclude that the marking of the goods with the Louis Vuitton trademarks amounts to making use of a description that is false in a material respect and likely to mislead the public as to the character, quality, or composition of the goods, contrary to paragraph 7(d) of the Trademarks Act: Singga at paras 107–108.
[36] My finding above regarding the existence of goodwill in the Louis Vuitton trademarks applies both to goodwill as that term is used in reference to passing off under paragraph 7(b) and goodwill as that term is used in section 22 of the Trademarks Act: Veuve Clicquot at paras 46, 50–54; Hamdard Trust at paras 46–50. I find that the use of the identical marks in association with counterfeit goods, particularly those of inferior quality sold at a discounted price, would likely have an effect on the goodwill in the marks, and that the likely effect would be to depreciate the value of that goodwill: Veuve Clicquot at paras 63–67; Singga at paras 107–108. I conclude that Louis Vuitton has established depreciation of the goodwill in the registered Louis Vuitton trademarks contrary to section 22 of the Trademarks Act.
(4) Louis Vuitton has established copyright infringement [37] In the absence of any contrary evidence or argument, the uncontested evidence of Ms. Checa Chong is also sufficient to establish that Louis Vuitton Malletier is the owner of copyright in a work known as “Multicolored Monogram-White Print.” This work shows a repeated series of Louis Vuitton trademarks, including the LV DESSIN and several flower designs, arrayed in a geometric pattern in multiple colours against a white background, and appears effectively to be a multi-coloured version of the design registered as TOILE MONOGRAM NsurB (LV & DESSIN), TMA960,128.
[38] The evidence demonstrates that at least two of the seized counterfeit goods bear the Multicolored Monogram-White Print. The defendants do not contest that these goods entail the reproduction of the Multicolored Monogram-White Print in whole or substantial part. I conclude that Louis Vuitton has established infringement of copyright contrary to sections 3 and 27 of the Copyright Act.
[39] Allegations of infringement in respect of a second work, known as “Multicolored Monogram-Black Print,” were withdrawn at the hearing.
C. Liability of the Defendants (1) Introduction [40] Hakam admits he imported and sold counterfeit Louis Vuitton goods and infringed the Louis Vuitton trademarks. The defendants assert that Hakam was the only one who engaged in and is responsible for the infringement, and that the other defendants, both personal and corporate, should not be found liable.
[41] For the following reasons, I find that on a balance of probabilities, Hakam, Mohammed, Waleed, Canadian Madmac, and Vivo Rosa are liable for the violations of the Trademarks Act and Copyright Act prior to service of the Anton Piller Order in September 2023, and that Hakam is also liable in connection with the further infringement in early 2024. I conclude that the evidence does not establish on a balance of probabilities that Aziz, Tayeb, Khaled, or Bahaaldin engaged in or should be found liable for the trademark and copyright violations. I will address the liability of each personal defendant below, followed by the two corporate defendants.
(2) Alhakam Brifcany [42] Hakam was actively involved in the advertising, offering for sale, and sale of counterfeit Louis Vuitton goods during the period from August 2021 until December 2023, with at least one additional sale in early 2024. He is seen in reports and videos by investigators as being involved in sale operations at Cawthra Road, including in the first attendance on August 28, 2021. While he claims that the initial sales at that location were run by Lisa and ShopFnomenal, Hakam was involved in the sales process from the outset. Indeed, Hakam’s own evidence, in the form of his notations on the Canadian Madmac bank account, show that he was receiving numerous payments for counterfeit goods at least since early August 2021 and even earlier, before the late August “pop-up” shop and before the first rent payment from Lisa Waisglass appears in Canadian Madmac’s account on August 19, 2022.
[43] Hakam was also present at Cawthra Road and active in the sale of counterfeit Louis Vuitton goods during investigative visits on February 26, 2022, and October 15, 2022. When investigators served a cease and desist letter at Cawthra Road on December 20, 2022, he was present and stated that he worked at the location. He was also there during later investigative visits on March 15, May 2, and August 16, 2023. Both before and after service of the cease and desist letter, Hakam communicated with investigators and arranged for sales; counterfeit goods were advertised on an Instagram account he controlled, <@designers_toronto>; and he received payments by e-transfer using his personal email account, although the recipient of the transfer was listed as Canadian Madmac.
[44] When the Anton Piller Order was served on September 13, 2023, Hakam was again present at Cawthra Road, although he left during the execution of the order. Despite the Anton Piller Order, which included an injunction not to import or sell products that infringe Louis Vuitton’s trademarks, Hakam continued to advertise counterfeit Louis Vuitton product through a different Instagram account, <@luxury_toronto1>, and sold another counterfeit Louis Vuitton bag to an investigator in early 2024.
[45] I am satisfied that Louis Vuitton has established that Alhakam Brifcany’s actions in connection with the sale of counterfeit Louis Vuitton goods render him personally liable for the violations of the Trademarks Act and the Copyright Act set out above.
(3) Mohammed Bani Torf [46] In his affidavit, Mohammed claims he does not know anything about any of the matters alleged in Louis Vuitton’s Statement of Claim and that he was not involved. He says the sale of counterfeit goods was “Hakam’s business,” and he never had anything to do with it beyond subleasing part of the Cawthra Road location for his business. He claims he was simply engaged in his own business selling Vivo Rosa branded items. At the same time, he admits that he and Waleed rented a portion of the Cawthra Road warehouse to Lisa for a ShopFnomenal weekend event, to attending the event with Waleed to “keep an eye on the space,” to renting the space to Lisa for a total of eight different weekends in 2021, and to subsequently renting space to Hakam for his business.
[47] Mohammed’s assertion that he never had anything to do with the counterfeit business is simply not credible. The evidence of the investigators, which I accept, was that Mohammed assisted customers in connection with the sale of counterfeit goods. He claims the counterfeit goods were all Lisa’s, but admitted on cross-examination that he assisted customers and arranged sales when Lisa was not there. He did the same for Hakam. Hakam also called him to the Cawthra Road location when the cease and desist letter was served by investigators in December 2022, whereupon Mohammed, in his own words, “kicked them out.”
[48] The <@vivo.warehouse> Instagram and TikTok handles associated with the Vivo Rosa business, were used in at least 2022 to advertise goods bearing various luxury brands, including counterfeit Louis Vuitton merchandise. While Mohammed claimed that Waleed was responsible for the Instagram account, it was clearly associated with the Vivo Rosa business that Mohammed and Waleed both ran. Mohammed claimed in his affidavit that he and Waleed started the <@vivo.warehouse> Instagram account and that it was used to showcase their own merchandise, which was “all Vivo Rosa brand items.” This is clearly not accurate, since the Instagram account was used to advertise counterfeit merchandise by at least early 2022.
[49] Screenshots from another Instagram account with the handle <@lv_toronto_fanpage>, dated in June and August 2023, show a link to WhatsApp with Mohammed’s telephone number, and include pictures of a variety of branded goods, including counterfeit Louis Vuitton merchandise. While he claims that he did not open the account and had no recollection of it, no satisfactory explanation was presented as to why his phone number was associated with the account. Mohammed’s telephone number also appeared on the shipping label on a box of counterfeit merchandise addressed to Tayeb, discussed further below.
[50] Mohammed’s credibility is also generally undermined by his assertions during his cross-examination that he was unaware that selling non-genuine goods was trademark infringement. Mohammed, Hakam, and Waleed had been served in March 2022 with a similar cease and desist letter on behalf of Chanel Limited and Chanel Inc. In the wake of this letter, Mohammed wrote in June 2022 to Louis Vuitton’s counsel (who also acted for Chanel), stating that they had stopped selling or carrying bags with Chanel trademarks “after we understood that [it’s] a trademark infringement.” This came after initial protests from Waleed that Viva Rosa “has never and will never sell counterfeit.” His protests, even in cross-examination, that he did not understand the legalities of it, or thought that the only issue was selling Chanel products, are simply not credible.
[51] Mohammed’s direct involvement in sales of counterfeit goods at the warehouse shows that he was not forthright in his affidavit, where he claimed he never had anything to do with “Hakam’s business.” He also did not present any personal financial records that might show the extent of his involvement, limiting his productions to an account held in the name of Vivo Rosa. Overall, Mohammed’s actions, knowledge, and involvement are inconsistent with his assertion that he had nothing to do with the counterfeit business or the sale or offering for sale of counterfeit Louis Vuitton products in particular.
[52] Mohammed may not have been as actively involved as Hakam, and may or may not have been the “ringleader” of the counterfeit business, as Louis Vuitton contends. However, I am satisfied that Louis Vuitton has established on a balance of probabilities that Mohammed Bani Torf’s actions in connection with the sale of counterfeit Louis Vuitton goods render him personally liable for the violations of the Trademarks Act and the Copyright Act set out above to the date of service of the Anton Piller Order. After that date, there is no evidence indicating that Mohammed continued to infringe Louis Vuitton’s trademark rights or copyright. In particular, there is no evidence connecting Mohammed to the <@luxury_toronto1> Instagram handle or to the further sale by Hakam.
(4) Waleed Bani Torf [53] Like his brother Mohammed, Waleed asserts that he does not know anything about any of the matters alleged in Louis Vuitton’s Statement of Claim, that he was not involved, that the sale of counterfeit goods was “Hakam’s business,” and that he never had anything to do with it. At the same time, he also adopts the substance of Mohammed’s affidavit, including having been involved in renting space at Cawthra Road to Lisa and later to Hakam for their business, and attending at the events at which counterfeit goods were sold. Waleed asserts that he did business selling Vivo Rosa products out of a partitioned space at the Cawthra Road location. He claims his involvement in the counterfeit business was limited to occasionally referring people to Hakam when they asked for products that Vivo Rosa did not sell.
[54] I find Waleed’s evidence, and in particular his assertion that he had no involvement in the sale of counterfeit goods, not to be credible. He admits in his affidavit to having accepted a payment by e-transfer from an investigator on October 25, 2021, which he forwarded to Hakam, but says it arose because “Hakam stepped out of the warehouse for a few minutes and asked me to assist him with a transaction.” This assertion is inconsistent with the investigator’s account, which I accept, that Waleed arrived to meet the investigator at the Cawthra Road location and opened the warehouse for him. Further, the video evidence from this event shows Waleed being entirely familiar with the products and their pricing, referring to himself as one of the owners, talking about customers from different locations in Canada, and stating that he had just made a shipment based on an online sale.
[55] Waleed admitted in cross-examination that he made other sales, accepting transfers and forwarding payments to Hakam. As noted above, he was also personally involved in posting photographs to the <@vivo.warehouse> Instagram account advertising counterfeit items including counterfeit Louis Vuitton products. He was also present when the Chanel cease and desist letter was delivered at Units 23 and 24 of the Cawthra Road location. Despite his claim that he only visited the showroom at Unit 75 occasionally to print shipping labels, he was there when the Louis Vuitton cease and desist letter was delivered, told the investigator that he worked there, and responded to the delivery of the letter by tearing it up.
[56] The evidence of the investigators, including the video evidence, shows that Waleed was knowledgeable, involved, and active in the sale of counterfeit goods including Louis Vuitton goods. Even after the Louis Vuitton cease and desist letter was delivered in December 2022, Waleed continued to be involved in selling counterfeit Louis Vuitton merchandise. He advertised counterfeits on an Instagram account named <@lustingforshoes>, which gave his Linktree account (waleedvivo). He also arranged a further sale transaction with an investigator in March 2023.
[57] I am satisfied that Louis Vuitton has established on a balance of probabilities that Waleed Bani Torf’s actions in connection with the sale of counterfeit Louis Vuitton goods render him personally liable for the violations of the Trademarks Act and the Copyright Act set out above to the date of service of the Anton Piller Order. After that date, there is no evidence indicating that Waleed continued to infringe Louis Vuitton’s trademark rights or copyright. In particular, there is no evidence connecting Waleed to the <@luxury_toronto1> Instagram handle or to the further sale by Hakam.
(5) Aziz Bani Torf [58] Aziz is a young man, who recently graduated from high school and commenced studies at college. His affidavit claims he has never worked for his brothers, Mohammed and Waleed, and does not know anything about any of the matters raised in Louis Vuitton’s Statement of Claim. He asserts that the only involvement he had in this case was being present at the September 14, 2023, search of the Bani Torf home, referred to at paragraph [26] above.
[59] It is clear that Aziz’s affidavit understates his awareness of the business. He was present at Unit 75 when the Louis Vuitton cease and desist letter was delivered on December 20, 2022. He also stated on cross-examination that he would sometimes move or cut up boxes, or throw out garbage for his brothers and Hakam, as unpaid labour. Louis Vuitton relies on these facts, together with (a) statements Aziz made to investigators on December 20, 2022, and September 14, 2023; (b) his presence at the Tedlo location in August 2023; and (c) his name on mail seized at Unit 75, to argue that Aziz was involved in the counterfeit business and is liable for violation of its trademark rights and copyright.
[60] I agree with Louis Vuitton that statements Aziz made to investigators on December 20, 2022, and September 14, 2023, show he knew the nature of the counterfeit business. This undermines his credibility, given his contrary claim that he knows nothing about the matters raised in the claim. I am not satisfied, however, that these statements are sufficient, either alone or in combination with the other evidence, to show that Aziz engaged in—or was otherwise sufficiently involved in the business to be personally liable for—passing off, making use of a materially false description, trademark or copyright infringement, or depreciation of goodwill. None of the numerous visits from investigators show Aziz engaged in the sale of counterfeit goods or assisting customers, and the evidence does not show him being paid for or profiting from the business. As Louis Vuitton concedes, Aziz’s presence and awareness of the business is not alone enough to attract liability. While Aziz would have been considerably wiser to avoid his brothers’ counterfeit merchandise business entirely, I conclude that his helping his older brothers with boxes and garbage is not sufficient to demonstrate trademark infringement or otherwise attract liability.
[61] With respect to the other evidence relied on by Louis Vuitton, I note that the investigator who attended at the Tedlo location in August 2023 stated that they did not observe any Louis Vuitton merchandise, or any fashion merchandise at all, such that Aziz’s presence there cannot be considered evidence that he violated Louis Vuitton’s trademark rights or copyright. Aziz’s name does appear on several documents seized from Unit 75, apparently in connection with shipping companies, including an uncashed cheque from UPS for an overpayment. However, the documents were addressed to Aziz at Unit 23, and there was nothing to connect them or the shipping particularly to the counterfeit business rather than the non-counterfeit Vivo Rosa business, even assuming his name was found on them as a result of his own actions rather than t