What’s the worse that can happen if you infringe someone else’s trade mark?
Court action, paying damages, expensive lawyer bills, rebranding costs?
Well, one Melbourne couple were willing to test the limits of the available sanctions. Unfortunately for them, that landed them in jail.
That’s right, prison. The slammer. The clink. The big house.
If locking someone up for trade mark infringement seems a bit extreme, it should be noted that the nature of the infringement was definitely at the extreme end.
The story goes like this -
Deckers Outdoor Corporation is the owner of the UGG Australia trade mark in relation to ‘footwear’ (yes, we’re talking about ugg boots). Mr and Mrs Vaysman (along with some associates and their related entities) decided that it would be a good idea to manufacture ugg boots and use Deckers’ UGG Australia logo.
Deckers sued the Vaysmans and their associates. Caught red-handed, the Vaysman’s negotiated a settlement and agreed not to use the Ugg or Ugg Australia trade marks. Having reached a settlement, Deckers discontinued it’s court action.
But the Vaysman’s continued to manufacture and sell the counterfeits. Deckers sued them again, this time for breaching the settlement agreement. The Vaysman’s settled, again promising not to use the Ugg or Ugg Australia trade marks.
But, yet again, the Vaysman’s continued with their manufacture and sale of the counterfeits. Deckers sued again. This time round, there was no settlement. In fact, Mr and Mrs Vaysman didn’t even bother putting in a defence. Summary judgment was entered against them with a court order restraining them from selling counterfeit ugg botts.
It must have been deja vu for Deckers when they found out that the Vaysman’s were, once again, making and selling counterfeits.
This time, however, there was a court order.
Now if you want to grab a judge’s attention, flagrantly ignoring a court order is the way to go.
And so to end this story, on 24 June 2010, Mr Vaysman was found guilty of contempt of court and sentenced to 3 years’ imprisonment. Mrs Vaysman was also found guilty of contempt and was ordered to serve 2 months of a 12 month sentence (the judge took into account her care of a 4 year old child).
Tags: contempt, counterfeits, infringement
