QLD Letter from Nike - How to Respond?

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melsueme

Active Member
3 July 2015
5
0
31
I have been sent this letter from Nike. Is it real?

I didn't advertise the shoes as genuine or replica. I buy them from an online store that also doesn't state they are real or fake (counterfeit). What do I respond with? My Facebook page is a closed group that you need to ask to be part of and I have had a listing on Gumtree.

Can someone please help me to respond?

[MODERATOR NOTE - LINKS TO DOCUMENT IMAGES REMOVED ON REQUEST FROM NIKE AUSTRALIA - 5/AUG/2015]

Nike is the proprietor of numerous Trade Marks registered throughout the world and in Australia. They are collectively referred to as "the NIKE Trade Marks".

Recently Nike Australia was made aware of the footwear and apparel you have bene offering for sale online. An investigation was started, and Nike specialists have inspected those items advertised by you. The goods inspected are counterfeit. your actions breach the Trade Marks Act 1995 and a host of other consumer protection acts and regulations.

We note that you have stated that you aware the items are not genuine, confirming that you are knowingly offering counterfeit goods for sale.

Your conduct amounts to a blatant infringement of Nike's rights, in respect of which Nike ... entitled to institute court proceedings against you for trademark infringement in accordance wit hthe provisions of the aforementioned act. Nike is entitled to seek injunctions, damages or an account of profits and costs.

Furthermore, your conduct is misleading or deceptive or likely to mislead or deceive in contravention of various State and Territory Fair Trading Acts. Additionally, your conduct constitutes a "passing off" of the infringing products as products sourced from Nike or an authorized distributor if sourced from overseas. Your conduct also constitutes the making of false representations.

Nike is now contemplating commencing legal proceedings against you.

This is your only opportunity to agree to a settlement of this claim before we formally proceed without further notice. Nike is only prepared to refrain from taking action against you if a settlement involves a financial contribution to cover Nike's costs in this matter and a contribution to Nike's lost revenue or damaged reputation.

Compliance with the following conditions is a requirement of any agreed settlement:
1. Immediately cease and forever desist from using in any manner any of the Nike Trade Marks or any name, word, mark, image or device that is identical or substantially identical or misleadingly or confusingly or deceptively similar to any of the Nike Trade Marks.
2. Deliver up to Nike for disposal, or for evidentiary purposes, your current stock of infringing products and copies of any related invoices, orders, delivery dockets, promotional material, customer details or any other associated documents (paper or electronic) whatsoever. (N.B. The infringing products are reasonably likely to be required as evidence in a legal proceeding. Destruction or concealment either by you directly, or indirectly by others with your express or implied authority is a criminal offence).
3. Disclose the name and address and provide all other relevant details including orders, invoices or other correspondence identifying the supplier of infringing products.
4. Pay $850.00 as a contribution to Nike's costs and damages.
5. Given an undertaking not to again infringe any of Nike's Trade Marks. The undertaking required is included in the pro forma letter referred to below which we require you to sign and return to us.

If a settlement is agreed and you fail to comply with these conditions Nike may without further notice commerce legal proceedings against you in the Federal Court.

You have until close of business on 10 July 2015 to seek legal advice and to contact the writer either agreed to, or refusing this settlement offer. If you choose to refuse our settlement offer (which you are entitled to do) no further correspondence will be entered into and we will engage our lawyers. After that occurs any further settlement would undoubtedly be on more onerous terms than included in this letter.

A pro forma letter 'template' has been provided to you with this letter which, when completed in full, will satisfy the requirements of paragraphs 1-3 and 5 above.

If you agree with the proposed settlement you have until close of business on 17 July 2015 to have done the following things:
* Package up your infringing product, complete and sign the pro forma letter and attach a bank cheque for $850.00 made out to Nike Australia Pty Ltd.
* Deliver all of the above stated things to Nike Australia Pty Ltd at 28 Victoria Crescent in Abbotsford, Victoria marked - Attention: Security and Brand Protection Manager.

We are prepared to consider a reasonable commercial outcome to this infringement but will not hesitate to commerce proceedings if you simply ignore this letter.

M. Layton
Security and Brand Protection Manager, Pacific Region
 

Sarah J

Well-Known Member
16 July 2014
1,314
251
2,389
Melbourne, Victoria
Hi melsueme,

Selling goods that contain Nike's trademark, or similar mark that looks like Nike's trademark, without Nike's consent, is a breach of IP law. Passing off counterfeit goods as if they are real Nike products is also a breach of many other laws (e.g. misleading and deceptive conduct). Further, in the UK, Nike has been known to sue a customer who (unknowingly) bought a pair of counterfeit Nike shoes online and Nike succeeded in arguing that the customer infringed their trademark. Granted, this was in the UK, so laws are different in Australia, however, it shows that Nike is known to take IP infringements seriously.

As for how to respond, take a read of:
However, do some research and see if the letter is genuinely from the company. Call them up to enquire. Try and negotiate with them. There have been some scam letters sent around from different suppliers (e.g. Adidas) that also demand $850 (or similar) amounts in compensation. Nevertheless, I suggest you stop reselling Nike products as it does constitute IP infringement.
 

DennisD

Well-Known Member
11 July 2014
179
58
589
Hi there
Well, not exactly a letter you would like to find in the mailbox!


To follow up from SarahJ's (very useful) comments and in particular her final paragraph, you might like to consider the following suggestions A to E:


A. Stop selling merchandise. Don't fulfil any more orders even if this means reimbursing customers for unfulfiled orders


B. Consider their requests as set out in points 1-5 in the letter. Think about how able in practical terms you are to meet each of these. Points 2, 3 and 4 may require a bit more thought on your part


C. Concerning the deadlines in their letter (which have come and gone already), consider your delayed response and if there was any particular reason for this. Was the letter only just brought to your attention for some reason? Delay on your part for no good reason may flag to them that you initially you did not take their concerns seriously. So consider if there were any circumstances which can help explain your delay


D. Call to confirm the letter and contact are genuine (as on first glance they appear to be)


E. If the contact is genuine, try to negotiate their points 1-5 and their deadlines. If you follow A to C above, this should help you. Put in writing (at least an email) what was said in your discussion and follow up as required.


The above are simply general suggestions for your consideration and certainly are not intended as an action plan. Good luck with this, let us know how it goes!
 
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