Monday 14 December 2009
G-Star Raw successfully protects its brand against counterfeits
G-Star Raw is an internationally renowned clothing company from the Netherlands. It specialises in creating
innovative and cutting edge designs in the world of denim. G-Star jeans, clothing and accessories are sold in over
5500 outlets in over 65 countries around the world including Australia. G-Star operates franchised stores in Brisbane,
Sydney, Adelaide and Melbourne and sells to specialised retailers in Australia including through national retailers
Myer and David Jones.
In March 2009, G-Star became aware that counterfeit G-Star branded items were being sold through a chain of retail
stores named 'Urban Culture' in New South Wales. Two of these stores are located in Westfield Shoppingtown
centres in New South Wales. The 'Urban Culture' stores are operated by Urban Culture Pty Ltd.
G-Star Raw issued proceedings in the Federal Magistrate Court of Australia against Urban Culture Pty Ltd and its
director Abdul Salam Auieda. G-Star alleged that Urban Culture Pty Ltd and Abdul Salam Auieda had, in offering for
sale and selling counterfeit G-Star branded items, committed acts of trade mark infringement, copyright infringement,
misleading and deceptive conduct and the tort of passing off. Urban Culture Pty Ltd and Abdul Salam Auieda failed
to comply with the orders made by the Court in these proceedings. G-Star was not aware of the quantity of
counterfeit G-Star stock sold in the "Urban Culture" stores. However, the evidence filed by G-Star showed then when
a representative from G-Star visited one of the 'Urban Culture' stores there was approximately 100 units of counterfeit
G-Star product being offered for sale.
G-Star made an application seeking judgment against Urban Culture Pty Ltd and Abdul Salam Auieda which was
heard by Federal Magistrate O'Dwyer on 9 December 2009. Federal Magistrate O'Dwyer granted the injunctive and
declaratory relief sought by G-Star.
Federal Magistrate O'Dwyer also awarded damages. His Honour awarded general damages for lost sales in the sum
of $5,727 based on an assumption that the 100 "G-Star" branded counterfeit items seen by the representative from G-
Star when he visited the 'Urban Culture' store had been sold. G-Star were also awarded general damages for the
loss G-Star suffered to its reputation, its 'exclusivity' in the marketplace and damage to the "G-Star" brand in the sum
of $35,000. In addition to this, G-Star was awarded additional damages in the sum of $50,000. The award of
additional damages was based on the conduct of the respondents the need deter similar conduct in the marketplace.
The total damages awarded was therefore $90,727. G-Star was also awarded legal costs.
In his judgment, Federal Magistrate O'Dwyer emphasised that it is important to protect copyright owners from the
destructive conduct of those who seek to pass off products as those of another, thereby seriously jeopardising the
fiscal welfare of brand owners and the clothing industry in a wider sense.
Tony Watson, a partner of Middletons who acted for G-Star, said "This was a great result, not only for G-Star but also
for all other well known brands. G-Star takes the issue of counterfeit products very seriously and are very pleased to
see that an Australian court has supported their standpoint. The international denim brand is committed to protecting
its brand and intellectual property rights and feels responsible for protecting their business relations, customers and
consumers. Therefore the brand will not hesitate to take quick and decisive action against those that seek to get a
free ride on G-Star's long and substantial investment in building and maintaining the "G-Star" brand and reputation
around the world".
Mr Watson said that in addition to monitoring market stalls and retail outlets for the sale of counterfeit "G-Star" goods,
G-Star has set up a customs program working closely with the Australian Customs Service to monitor and seize
shipments of counterfeit G-Star stock being imported into Australia. The brand has had success in stopping both
small and very large quantities of counterfeit G-Star goods that people attempt to import into Australia.
About Middletons
In the modern commercial world, standing still is not an option. Middletons is a full service Australian commercial law
firm.
Our clients are serviced by over 500 employees, including 300 legal advisers, from our offices in Melbourne, Perth
and Sydney.
We have extensive experience acting for industry leaders, major corporations and government on groundbreaking
legal transactions in Australia and internationally. Our commercial expertise and knowledge in specific industries
ensures we add value to our clients’ businesses.
The Middletons’ approach is refreshingly different. We don't confuse clients with lots of legal speak – we are straight
talking.
Further information
Tony Watson
Partner
T: +61 3 9640 4331
M: +61 418 358 384
E: tony.watson@middletons.com
Jeremy Hyman
Media and Communications Manager
T: +61 2 9513 2451
M: +61 449 953 890
E: jeremy.hyman@middletons.com
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