Federal Court Obliges Costco to Provide $5.5 Million for Duplicate Tiffany Jewelry
In a landmark decision, Tiffany & Co. has secured a victory against Costco Wholesale Corp in a long-standing trademark dispute. The case, Tiffany & Company et al v. Costco Wholesale Corp, was heard in the U.S. District Court for the Southern District of New York, No. 13-1041.
The saga began in 2012 when a customer informed Tiffany about "Tiffany" branded rings not associated with Tiffany & Co. for sale at Costco. The court ruled in September 2015 that Costco was liable for willfully infringing Tiffany trademarks. The jury has yet to decide on punitive damages.
The opposing party in the case is the SPI Group (Spirits International). However, it's important to note that this case does not involve any connection to Facebook, Messenger, Twitter, Pinterest, LinkedIn, WhatsApp, or Email.
The court ruled that Costco's use of the Tiffany brand name on the rings was likely to lead consumers to believe they were buying an actual Tiffany ring. In September 2016, a federal jury ordered Costco to pay Tiffany $5.5 million in damages for selling about 2,500 diamond engagement rings with the Tiffany brand name. The award consists of $3.7 million representing Costco's profits from the counterfeit sales and $1.8 million to account for the benefits Costco derived from the sales.
This case is one of many trademark infringement disputes that highlight evolving challenges in trademark law enforcement and protection. Similar cases include Apple vs. Samsung, Harley-Davidson vs. SunFrog, Starbucks Corp. v. Wolfe’s Borough Coffee ("Charbucks" case), McDonald's vs. Supermac’s, and Reddit vs. Plaintiff over “WALLSTREETBETS” trademark.
In another related development, Russia's state-owned company, Sojuzplodoimport (Союзплодоимпорт), has won a court case in the Netherlands, granting it ownership of the Stoli and Stolichnaya trademarks in Belgium, the Netherlands, and Luxembourg.
Interestingly, the United States Court of Appeals for the Federal Circuit has allowed the registration of the trademark FUCT for a clothing brand, despite it being considered immoral or scandalous due to its similarity to a vulgar verb.
Meanwhile, in India, the Bombay High Court has dismissed a trademark infringement case filed by the publisher of fashion magazine Vogue, seeking to restrain a retail store chain from using the phrase "JUST IN VOGUE."
These cases demonstrate diverse contexts of trademark infringement disputes—from product design and online platforms to trade dress and brand name dilution—highlighting the complexities and evolving nature of trademark law. They show how courts balance brand protection with fair competition and usage requirements.
In the realm of finance and business, the court ruling against Costco Wholesale Corp for trademark infringement of Tiffany & Co.'s brand has resulted in a significant fine, with the retailer ordered to pay $5.5 million in damages for selling counterfeit diamond engagement rings. On another note, the US Court of Appeals for the Federal Circuit has allowed the registration of the controversial trademark FUCT for a clothing brand, adding a layer of complexity to trademark law enforcement and protection.
