Tiffany and Costco battle continues

6.0 k views | Posted January 28, 2014 | By Jonathan Green

The dispute around the use of “tiffany setting” is set to continue after a US federal court declared there was a “genuine factual dispute” over its use as a generic term.

Tiffany & Co’s attempts to dismiss a counterclaim from Costco that “tiffany setting” is a generic term has been thrown out by a US federal court.

As reported previously by Jeweller, there have been ongoing legal battles between the giant warehouse chain and the iconic jeweller regarding the selling of Tiffany-labelled diamond rings in Costco stores around the world.

At the heart of the dispute is the use of the word “Tiffany” in Costco’s labelling and advertising. Tiffany & Co took legal action in February 2013 claiming Costco was falsely selling diamond rings branded as Tiffany.

Costco counterclaimed this action, stating it was not claiming to sell Tiffany & Co rings, but rather that the labelling referred to a “tiffany setting” which Costco claims is a generic industry term.

Lawyers for Tiffany & Co went back to court in April 2013 to have the counterclaim of “tiffany setting” being a generic term thrown out; however, a Southern District New York Court has ruled that the case can proceed.

US-based industry magazine JCK has reported that, in its defence, Costco brought forward Gem Certification & Assurance Lab president Donald Palmieri as a witness. Palmieri testified that in his experience and through his research, the use of “tiffany setting” as a description was widespread in the jewellery community.

Tiffany & Co claimed this was irrelevant, as Costco never used the word “setting” in its labelling or advertising. Furthermore, Tiffany & Co argued that the term could only refer to a “particular style of engagement ring that was designed by company founder Charles Lewis Tiffany”.

Although Judge Laura Taylor Swain did not validate Costco’s claim that “tiffany setting” is indeed a generic term, she did state that there was a “genuine factual dispute” over its use and so dismissed Tiffany & Co’s case.

While this may appear to open the door for more legal disputes, some media reports suggest that it is hoped it may actually expedite a settlement, as Tiffany & Co would not want to risk its iconic setting being legally classified as generic.

Background reading
Tiffany & Co sues supermarket chain
Tiffany vs Costco – round 3
Leaked email could affect Tiffany case