The trademark lawsuit between luxury jewellery company Tiffany and discounter Costco is heating up! A New York federal judge has denied Costco’s request to prevent Tiffany & Co. from contacting 2,500 Costco customers who purchased “Tiffany” engagement rings from its stores. The court stated that Costco hadn’t shown how the jeweler’s interviews would cause it a significant competitive disadvantage. Costco had lodged the request because it feared that Tiffany will try to convince Costco members that they were sold counterfeit rings, which they maintain, is not true.
Tiffany originally filed suit against Costco last February, 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.
Tiffany became aware of the situation in last November and sent out a cease-and-desist letter. 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 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, Isabel Marent for H&M, Tiffany for Costco…
The case continues. More to come on this one!