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
