While David Beckham has his hands full with Inter Miami’s pre-season preparations, the former England captain will be keeping an eye on the lawsuit his company DB Ventures has filed against various sellers offering counterfeit designs under the brands “David Beckham,” “Beckham” and other trademarks.
It is estimated that the UK counterfeiting industry is worth over £8 billion, and this figure is in line with the global outlook as counterfeits account for an increasing proportion of imports and exports.
The challenge with a brand as prestigious as David Beckham is the level of investment required and the monitoring of the portfolio. Trademark rights are territorial in nature, meaning you are only protected in the place where you apply for registration. DB Ventures has registered over 150 trademarks in various territories, some of which are two decades old.
There has been continuous and significant investment in this portfolio of brands worldwide and it is no surprise that the company is now seeking to assert its rights in the face of the growing number of sellers of counterfeit products.
The lawsuit filed in the United States alleges that the use of these signs by counterfeiters would damage the distinctive character and reputation of the mark.
It is argued that the existence of a significant number of counterfeiters would weaken the distinctive character of DB Ventures’ brands, as it could be difficult for consumers to distinguish between suppliers when assessing authenticity. At the same time, inferior quality products sold by counterfeiters under these brands could damage the reputation of a brand that is supposed to be associated with high-quality, reliable products.
Counterfeiting is the only area of trademark law that is harmonized worldwide and carries criminal penalties. In the case of trademark infringement, it is also a civil offence. If found guilty, a person can be fined or imprisoned in both the UK and the US for selling and trading in counterfeit products.
Therefore, the impact faced by the online sellers named in the lawsuit is significant and severe.
However, the difficulty in such online counterfeiting disputes is not in filing the lawsuit, but in serving it on the defendants, who may be based abroad even if their accounts are directed to the US or UK.
Another challenge is to ensure that supply is stopped at the source – for example at the design and manufacturing level – and not at the retail or distribution points.
Even if retailers were denied access to these accounts without an injunction being imposed on the manufacturer, the manufacturer could simply direct its deliveries to other retailers.
In most jurisdictions, obtaining manufacturer information from retailers who violate the laws is a routine part of the legal process.
Over the course of his globetrotting career, Beckham has played for teams in fashion capitals such as Milan, Paris and Madrid. Once information is available on the manufacturers of the counterfeits, this is the strategy for enforcing the regulations. This is especially true when action has to be taken in overseas territories, where things become significantly more difficult for DB Ventures.
Lakmal Walawage is a partner and head of intellectual property at JMW Solicitors in London.
