Thursday, September 10, 2015

Costco to Pay

The luxury retailer Tiffany and Co. has triumphed in its suit against the warehouse club Costco Corp. filed on February 15, 2013. Tiffany contended that Costco was engaging in the sale of counterfeit Tiffany diamond engagement rings. In the complaint Tiffany accused Costco of counterfeiting, unfair competition, trade mark infringement, injury to business reputation, false and deceptive trade practices and false advertising. Tiffany contended that Costco had willfully violated the laws and was liable for trade mark infringement and trade mark counterfeiting in its use of ‘Tiffany’ on signs in the jewelry cases at its stores.

The TIFFANY mark has been used continuously for 175 years and enjoys worldwide fame and recognition. Tiffany contended that when Costco used their mark to refer to goods which had no relation to Tiffany and Co. whatsoever, it infringed Tiffany’s trademark and damaged both their customers and their brand. However, Costco defended itself aggressively and contended that the Tiffany ring setting is an ‘industry – standard’ term comprising of multiple prongs extending upwards to hold a single diamond. It denied infringement and asked the Court to prohibit the Plaintiffs (Tiffany) from leveling any false claims of the exclusive right to use the term Tiffany for a style of ring setting.

On September 9, 2015 a U.S. District Judge rejected Costco’s claim that Tiffany is a generic term for a kind of ring setting and ruled that Costco willingly sold counterfeit Tiffany diamond rings and would face a jury trial on October 30, 2015 to determine the damages for trademark infringement and counterfeiting.

Nayanika Singhal