Market Bags Imitator

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Pirate Joe’s can no longer claim to be an unaffiliated, unauthorized, and unafraid reseller of Trader Joe’s products.

The Vancouver, British Columbia, company shut down last week amid rising legal costs after the 9th Circuit Court of Appeals overruled a lower court decision, allowing Monrovia-based Trader Joe’s to pursue a closely watched lawsuit for trademark infringement.

“This is going to affect California businesses,” said Eugene Chong, attorney at Pasadena-based Chong IP Law Group, a patent and trademark legal firm. “Companies in California that have federal trademarks can file lawsuits against foreign companies who may be violating their trademark.”

Trader Joe’s filed its lawsuit in 2013, a year after Mike Hallatt opened his store in Vancouver, where Trader Joe’s doesn’t have stores.

“I opened Pirate Joe’s so my fellow Vancouverites would have easier access to better groceries,” he wrote on online fundraising platform Crowdjustice, where he was trying to raise $50,000 toward additional legal fees.

Trader Joe’s filed alleged trademark infringement based on federal and state law in the District of Washington. Pirate Joe’s won at the lower federal district court level with the court ruling that since the violations occurred in Canada where Trader Joe’s does not operate, the latter had failed to prove that its business had been affected.

“The court ruled that since the basis of the infringement case was in Canada, the Lanham Act which is the federal trademark act, would not apply and was thus dismissed,” Chong said.

The ruling allowed for a short-lived victory for Hallatt, who in the meantime had changed his store’s name to Irate Joe’s. Trader Joe’s filed an appeal in the 9th Circuit in August, and the appeals court overturned the district court’s ruling, allowing the case to go to trial in November.

Hallatt maintained that since he bought the products, he could do whatever he wanted with the inventory.

According to the fundraising page, he said he would drive to Seattle where he would buy products from Trader Joe’s at full price, declare them at the Canadian border, and then resell them in his Vancouver shop.

That is a separate issue, Chong said.

“This case is fundamentally about trademark,” he said. “Because (Hallatt) had created a store that looked similar to Trader Joe’s, had similar style fonts with its logo, among other examples, Trader Joe’s was saying that he was diluting their trademark.”

A spokeswoman for Trader Joe’s declined to comment.

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