A “legal fake” is exactly what it sounds like and shouldn’t be possible: a company selling your brand, lawfully, because it registered your mark in a country before you did. Samsung announced a global collaboration with one by mistake.
What a legal fake is
The term is contradictory, and describes the practice of securing a legal right over a trademark by registering it in a country before the original owner does.
Supreme Italia
The classic example is Supreme Italia, a company whose entire presence was built on the concept. The strategy was simple: target less informed customers into believing they were buying products from the original brand, Supreme.
It worked well enough that in 2018 the telecom giant Samsung announced a collaboration with the brand — without the slightest inkling that the association was with Supreme Italia rather than the original Supreme. The association was subsequently revoked, but not before the announcement had been made publicly.
Why it’s possible
Supreme Italia exploited jurisdictional variations in trademark law. Many countries follow the first-to-file principle, where rights go to the first party to file a registration — not the first to use the mark in commerce. That system is what enables legal fakes to operate.
The contrast with India is instructive. India is a first-to-use jurisdiction, where a prior user can defeat a later registrant, and Indian law additionally protects well-known marks irrespective of registration or use in India. That reduces exposure but does not remove it: an unregistered brand still has to prove its prior use and reputation in contested proceedings, which is slower and far more expensive than having filed.
The courts step in
Supreme’s first encounter with these fakes came in 2016, leading it to sue Supreme Italia — a structure comprising an Italian company producing and selling the clothes online and in shops under licence, and a UK private limited company, International Brand Firm (IBF), which had registered and licensed the trademark in Italy and other countries. IBF was effectively the business behind the brand.
The High Court of Milan ruled in favour of the original Supreme, issuing an injunction halting Supreme Italia’s operations in Italy and declaring its activities illegal. A subsequent appeal was denied.
The real lesson
A major factor enabling Supreme Italia was the lack of protective measures adopted by the original brand. Supreme had built enormous cultural value without securing corresponding registrations across the markets where that value could be exploited.
The effects of legal fakes are destructive in a way litigation does not fully repair. Even with court intervention, it is very difficult to regain the trust of consumers who bought what they believed was the real thing. The Samsung episode illustrates the point: the collaboration was unwound, but the confusion had already been broadcast globally, and the story attached itself permanently to the brand.
Legal relief is available, but the priorities are preventive:
- File in the territories that matter — including markets you have not entered yet but whose consumers already know your brand. Cultural reach outruns commercial presence, and squatters watch for exactly that gap.
- Monitor the registers in those territories, so an application is met with an opposition rather than a lawsuit against an established business years later.
- Act early. Once a squatter has registered, licensed and built distribution, unwinding it takes years and multiple jurisdictions.
Legal fakes are potent enough to jeopardise not just the value of the violated trademarks, but the reputation and credibility of the entire brand.
The takeaways
- First-to-file systems reward whoever registers first — not the originator.
- Supreme Italia built a business on the gap and drew in Samsung by mistake.
- Courts will intervene — Milan injuncted the operation and refused the appeal.
- Prevention beats remedy — file and monitor in territories where your brand is known.
Frequently asked questions
What is a legal fake? A product sold lawfully under someone else’s brand, because the seller registered that trademark in a country before the original owner did.
How do legal fakes exist legally? They exploit first-to-file jurisdictions, where trademark rights are awarded to the first party to file rather than the first to use the mark in commerce.
Is India exposed to legal fakes? Less so — India is first-to-use and protects well-known marks — but an unregistered brand must still prove prior use and reputation, which is slow and costly.
How can a brand prevent this? By filing in territories where its brand is known even before entering them commercially, monitoring registers there, and opposing squatter applications early.
Useful official resources
- WIPO — Madrid System
- The Trade Marks Act, 1999