It looks like Tiffany and Costco will battle their trademark dispute out in front of a jury. The U.S. District Court for the Southern District of New York ruled on Tuesday that Costco infringed on the jewellery brand’s trademarks; Tiffany & Co and set a hearing date for 30 October.
“Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark,” Judge Laura Taylor Swain stated in her ruling.
Luxury jewellery company Tiffany filed suit against Costco back in February 2013 (Valentine’s Day) claiming that it has been selling wrongly labeled “Tiffany” rings. Tiffany accused Costco of trademark infringement, counterfeiting, unfair competition, injury to business reputation, false advertising and deceptive business practices, all relating to the promotion and sale of rings branded ’Tiffany” in Costco’s Huntington Beach, California store. Costco maintains that it is legally entitled to use the word “Tiffany” to describe the ring setting because it has become a more generic term. ”Tiffany setting” refers to a six-pronged engagement ring, Costco has argued. Tiffany became aware of the situation in November 2012 and sent out a cease-and-desist letter. Although Costco immediately took down the sign, Tiffany claim that intangible damage had been sustained.
“Tiffany doesn’t sell through Costco, they only sell in Tiffany stores,” said its lawyer Jeffrey Mitchell.
It’s not the first time Costco has been hot water over selling designer products. In recent years it has been sued by Yves Saint Laurent for both selling counterfeit perfume and for repackaging and selling actual YSL cosmetic and beauty products.
But who would actually believe you can buy a Tiffany ring at Costco? Perhaps consumers have been confused by the never ending stream of designer/high street collaborations, JW Anderson for Topshop, Balmain for H&M, Tiffany for Costco…