May 20, 2022

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Forget Mediocre Fashion

Luxottica, The RealReal Settle Suit Over Allegedly Counterfeit Eyewear


Luxottica and The RealReal surface to have settled a reasonably limited-functioning lawsuit about the reseller’s alleged observe of “knowing[ly] and deliberate[ly] hijacking of Luxottica Group’s and Oakley’s popular trademarks” by way of the “promotion and sale of sunglasses bearing counterfeits of the Ray-Ban and Oakley trademarks” on its e-commerce site. In response to a joint stipulation of dismissal lodged with the court on January 10, Choose Jose Martinez of the U.S. District Court docket for the Southern District of Florida dismissed the scenario with prejudice, meaning that Luxottica simply cannot refile the quite exact claims towards the reseller at a afterwards date. 

The dismissal comes 7 months immediately after Luxottica very first submitted fit towards The RealReal, “seeking to tackle the defendant’s counterfeiting routines and to defend unknowing people from paying for counterfeit goods.” Pointing to a amount of take a look at buys of Ray-Ban and Oakley sun shades by an investigator on The RealReal’s e-commerce site carried out among July 2019 and May 2021, 3 of which came with “a pamphlet declaring ‘Authenticity Guaranteed’ and ‘At The RealReal, there is an pro driving every single merchandise,’ and ‘Our . . . luxurious brand professionals inspect every merchandise we market,’” Luxottica alleges that it “determined that the sunglasses and similar components … were being in actuality counterfeit products and solutions that infringed a person or additional of the Ray-Ban and Oakley trademarks.” 

Location out a solitary claim of trademark counterfeiting, Luxottica asserted in its June 2021 criticism that The RealReal’s functions “are likely to develop a phony perception and deceive buyers, the community, and the trade into believing that there is a link or affiliation involving the counterfeit items and Luxottica Group and Oakley,” and sought monetary damages and injunctive reduction to preliminarily and permanently bar The RealReal from this sort of alleged things to do going ahead. 

In response to Luxottica’s match, The RealReal argued in its subsequently-filed answer that it should be shielded from the eyewear titan’s statements by an array of affirmative defenses. According to the reseller, Luxottica’s grievance really should be barred – in entire or in aspect – by the doctrine of laches and by the doctrines of waiver, estoppel, acquiescence and/or unclean fingers – simply because the eyewear-maker was conscious of the alleged infringement as early as July 2019 but failed to object and “unreasonably delayed in bringing suit.”

Beyond that, The RealReal argued that it is protected by the First Sale doctrine (the lawful tenet that mandates that once a trademark owner releases its items into the marketplace, it frequently are not able to protect against the subsequent re-sale of those goods), as Luxottica “authorized the sale of [the] solutions bearing its emblems to shoppers who then sold [those] products as a result of The RealReal’s web-site.” (In generating these types of a claim, The RealReal appeared to suggest that possibly the glasses at situation had been, in fact, genuine – or that if they were infringing, they, even so, originated from Luxottica or an approved celebration.)

Amongst other defenses, The RealReal asserted that any alleged infringement on its part “was innocent” and that “at all periods, [it] acted in good religion.” To the extent the products and solutions recognized in the complaint are, in fact, counterfeit products, The RealReal claimed that it “was unaware” of that. 

In the past key pre-settlement development, Luxottica attempted to get far more than 50 % of The RealReal’s defenses – which includes laches and waiver, estoppel, acquiescence and/or unclean fingers – tossed out, mostly to no avail. In conditions of the laches and waiver/unclean arms defenses, in an buy dated December 15, Judge Martinez identified that even with Luxottica’s claims to the opposite, The RealReal adequately alleged facts that aid these affirmative defenses, and therefore, furnished “fair see to [Luxottica] of the nature of the defenses.” 

As for the defenses in which The RealReal alleged that Luxottica’s statements are barred for the reason that it did not undergo any damages as a result of The RealReal’s alleged perform that if it did endure damages, they “were not brought on by [The RealReal]” and that Luxottica is not entitled to injunctive reduction due to the fact “at a least, [it] endured no irreparable harm, and [thus, has] an suitable treatment at law,” the court docket all over again refused to strike the defenses. Luxottica argued that these affirmative defenses “are mere denials of allegations in the complaint,” and hence, and should be stricken, but in mild of the actuality that “federal courts have frequently held that ‘[w]hen this occurs, the good remedy is not strike the declare, but fairly to handle it as a specific denial,’” the court docket opted not to toss out the defenses.   

Chanel has lodged very similar trademark promises in opposition to The RealReal in a even now-ongoing scenario that bought its start off in a New York federal courtroom in November 2018.

The case is Luxottica Team S.p.A. and Oakley, Inc., 1:21-cv-22058 (S.D. Fla.)