A US district court ruled in favour of the jewellery retailer after more than two years of legal proceedings, rejecting the notion that the term ‘Tiffany’ had become generic.
Tiffany & Co initially filed suit against Costco in February 2013, claiming the warehouse retail giant was falsely selling Tiffany-branded diamond engagement rings in its stores.
Tiffany & Co initially filed suit against Costco in February 2013, claiming the warehouse retail giant was falsely selling Tiffany-branded diamond engagement rings in its stores.
Costco responded with a counterclaim stating it was not purporting to sell genuine Tiffany rings but rather using the generic industry term ‘Tiffany setting’ in its labelling.
Tiffany & Co returned to court in April 2013 to have the counterclaim dismissed, arguing that Costco never used the word ‘setting’ in its labelling or advertising.
However, in January 2014, the US District Court for the Southern District of New York allowed the case to proceed, stating there was a “genuine factual dispute” over the use of ‘Tiffany’ as a generic term for a pronged ring.
In its most recent ruling, though, the court denied Costco’s claim, concluding Tiffany & Co had “proffered uncontroverted evidence demonstrating the strength of its mark”.
Furthermore, the court found Costco liable for trademark infringement and trademark counterfeiting in its use of the word to describe engagement rings that had not been supplied by the iconic jeweller.
“We are gratified that the court found that Costco’s use of the Tiffany trademark infringed on our rights,” Leigh Harlan, Tiffany & Co senior vice president, secretary and general counsel, commented. “We believe this decision further validates the strength and value of the Tiffany mark and reinforces our continuing efforts to protect the brand.”
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