16
Jan/04

Don't Ask, Don't Sell?


Contrary opinions are coming in response to my question regarding innocent infringement.  To recap: a retailer is unsure if a batch of goods is counterfeit.  It asks a clerk in the trademark owner’s outlet store, who (erroneously) states that they are genuine.  The retailer also submits the goods to the trademark owner’s repair department, which repairs the sample without comment.  The court referred to this retailer as an innocent infringer.  As a preliminary point, I think that this retailer will be the last one allowed to use this fact pattern to establish innocence, now that we know that counterfiets fool even the repair department.

Some readers comment that the retailer should have gone to the trademark owner’s legal department.

However one reader, Pamela Chestek, notes that:

. . . [S]elling gray market goods can sometimes be perfectly legal, but there’s no manufacturer that LIKES it.  Once Gucci finds out it will quite likely sue (even if the goods are authentic and legal), so why send them an invitation?  They would also wind up with pretty nice evidence that there was no material difference, in support of the legality of the importation of what they thought were just parallel, not counterfeit, goods

So, between the possibility that ‘covert’ questioning like that done here can produce a false positive, and overt questioning may produce a false negative, what should a retailer do?   There is the maxim that you shouldn’t ask a question if you’re not prepared to abide by the answer.

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