Tokidoki is an international fashion lifestyle company with its headquarters in Los Angeles, USA. Tokidoki has developed an innovative line of apparel, handbags, cosmetics and accessories all featuring depictions of its unique larger-than-life characters and trade marks. Tokidoki's designs and prints are renowned for their individual design qualities. The brand's cult status has fuelled high-profile collaborations with Karl Lagerfeld, Sephora, LeSportsac, Onitsuka Tiger, Marvel, New Era, Hello Kitty, Fujitsu, Levi's, Smashbox Cosmetics, Xbox, T-mobile, Fornarina, Skullcandy and Medicom Toy. Tokidoki sells its products to many retailers throughout Australia.
In January 2010, Tokidoki was alerted by Australian Customs Service to a shipment which contained a substantial number of counterfeit "Tokidoki" bags. All of these bags featured swing tags and sewn in labels featuring the "Tokidoki" trade mark. Some of the bags featured reproductions of Tokidoki's designs which are protected in Australia as copyright works being the "Eco" and "Carnival" prints (see attached). Other bags featured designs which were not created by Tokidoki but the fabrics reflected the type of designs which are created by Tokidoki. The importer of these products was Kopuz Leather and the operators of this business are Ali and Fatma Kopuz.
In January 2010, investigators briefed by Tokidoki visited Mr and Mrs Kopuz's market stall at Paddy's Market in Sydney. The investigators purchased bags which all featured the "Tokidoki" trade mark. Some of these bags also reproduced Tokidoki's "Eco" Print.
Tokidoki issued proceedings in the Federal Magistrates Court of Australia against Mr and Mrs Kopuz. Tokidoki alleged that the respondents had, in offering for sale and selling counterfeit "Tokdioki" products, committed acts of trade mark infringement, copyright infringement, misleading and deceptive conduct and the tort of passing off. .
The case has now been settled between the parties. The respondents agreed to pay a significant amount in costs and damages to Tokidoki to settle this proceeding. The respondents also gave undertakings agreeing to not in the future manufacture, import for sale, sell, or by way of trade, offer and/or expose for sale, or exhibit in public products featuring the "Tokidoki" trade marks or Tokidoki's copyright works if these trade marks or copyright works were been applied to these goods with the consent of Tokidoki.
Ivan Arnold, President of Tokdioki LLC said "Tokidoki is committed to protecting its brand "Tokidoki" and its original copyright works and the distinctive look of its products. Over the years Tokidoki has many times taken action against copyists and sellers of counterfeit "Tokidoki" product in Australia and overseas who have copied our innovative and exclusive designs and used the "Tokidoki" brand without our consent. It is important that Tokidoki protects its original designs and the "Tokidoki" brand so that its loyal customers are guaranteed that the products which they purchase are the quality they expect and so that they do not see cheap poor quality knock off imitations in the market and being used or worn by other people. If they see that it does irreparable damage to our brand". As the "Tokidoki" brand achieves greater international acclaim further counterfeit product is entering into the marketplace and constant vigilance needs to be maintained against copiers of Tokidoki's designs.".
Tony Watson, a partner of Middletons who acted for Tokidoki, said "Tokidoki hopes the settlement reached by Tokidoki delivers a strong message to importers and retailers –"Don't import or sell counterfeits of Tokidoki products!" Counterfeiting is now more prevalent than ever in Australia and throughout the world and brands like Tokidoki need to be vigilant in protecting their intellectual property rights and taking action against counterfeiters and sellers of counterfeit product. Tokidoki is committed to protecting its brand and business relations with its stockists and customers. The Customs program operated by Australian Customs Service clearly works very well and greatly assists brand owners in seizing counterfeit product at the border before the products enter into the Australian marketplace. All brand owners should set up Customs programs with Australian Customs Services as it is a low cost and effective way of identifying and seizing counterfeit product at the border".
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