Tiffany Wins Trademark Battle

22 08 2017

Tiffany & Co awarded over $US19 million after winning trademark battle

A U.S. federal judge has ordered Costco Wholesale Corp to pay luxury American jewellery retailer, Tiffany & Co, over $US19 million in damages for the warehouse chain’s sale of counterfeit engagement rings under the “Tiffany” name.

Tiffany & Co originally filed the lawsuit on Valentine’s Day 2013 accusing Costco of trade mark infringement, counterfeiting and false and deceptive business practices for the sale of diamond engagement rings bearing the “Tiffany” name.

During the proceedings, Costco argued that the term, “Tiffany”, had become a generic term that could be used on a standalone basis.

In her judgement, U.S. District Judge Laura Taylor Swain found against Costco and awarded Tiffany & Co $11.1 million plus interest, as well as $8.25 million in punitive damages. The judge further barred Costco from selling any products not made by Tiffany & Co as “Tiffany” products, except for where modifiers are used to suggest that the products have, for example, a Tiffany “setting”, “set” or “style”.

This case serves as an important reminder that brands should seek to actively enforce their trade mark rights against infringers, as well as take care to avoid the costly mistake of infringing the trade mark rights another brand.

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