Seller of goods bearing infringing check hit with penalty

In Burberry Ltd v Zebra A/S (Case V-108-05, November 6 2006), the Danish Maritime and Commercial Court has ordered the defendant to pay €20,112 in compensation to Burberry Ltd, plus interest and court fees, on the grounds that its sale of purses featuring a check pattern infringed Burberry's Check Camel trademark.

Burberry was established in 1856 and produces, among other things, clothes, shoes, bags, purses and umbrellas. The Burberry Check Camel trademark is Burberry's best known figurative mark.

Zebra A/S runs 57 shops in Scandinavia, most of which are located in Denmark. At the beginning of 2005 Burberry became aware that Zebra was selling purses with a design similar to the Burberry Check Camel trademark. It then made test purchases in four different stores in Copenhagen. Following an analysis of these samples, Burberry concluded that the products included counterfeits of the Burberry Check Camel trademark.

On March 1 2005 the bailiff's court in Copenhagen issued an order for seizure of the infringing products and issued an injunction against Zebra. As the parties could not come to an agreement regarding the payment of damages for the marketing and sale of the infringing products, the case went to the Maritime and Commercial Court.

During the court proceedings, Zebra admitted the infringement, but claimed that the sale of the purses was done in good faith. Burberry claimed that the check on the purses in question was an identical imitation of the Burberry Check Camel trademark, and therefore likely to cause confusion. Furthermore, in the delivery notes of Zebra, the purses were referred to as "Burberry Check". In light of this, Burberry claimed that Zebra could not claim to be unaware that the purses included counterfeit versions of the Burberry Check Camel mark.

The court held that Zebra in its import, marketing and sale of products carrying the Burberry trademark had acted in gross negligence. In addition, it ruled that (i) the design on the purses in question was an exact imitation of the Burberry Check Camel trademark, and (ii) the use of this mark by Zebra had caused damage to Burberry as a result of lost sales and market disturbance.

Accordingly, the court ordered Zebra to pay €20,112 in compensation. Moreover, Zebra was ordered to pay interest from July 5 2005 and the costs of the case, which amounted to €4,693.

The award demonstrates that the courts are now prepared to grant higher levels of damages to holders of luxury brands in cases of counterfeiting.

Jeppe Brogaard Clausen and Malene Fagerberg, MAQS Law Firm, Copenhagen