15 August 2017Trademarks

Costco ordered to pay damages over counterfeit Tiffany rings

Wholesaler Costco has been told it must pay an initial sum of $8.2 million to jewellery company Tiffany for unlawfully using its trademark on rings.

In the ruling (pdf), handed down yesterday, August 14, US District Judge Laura Swain also said that Tiffany is entitled to recover $3.7 million as profits for trademark infringement, tripled, if it does not instead elect to recover statutory damages.

The jewellery company is already entitled to recover the punitive damages worth $8.2 million.

The ruling stems from a complaint(pdf) made by Tiffany in 2013 in which it stated that Costco had unlawfully used the Tiffany trademark on rings and sold them at a lower price to attract customers.

It stated that this was part of a wider “aggressive marketing” campaign to sell various jewellery brands at a lower price.

“Costco counterfeited the Tiffany trademarks for the sole purpose of misleading its members and creating a false impression about the rings,” the complaint added.

Swain also granted Tiffany a permanent injunction preventing Costco from using the ‘Tiffany’ mark as a standalone term.

Tiffany owns a variety of trademarks for use with rings, including number 133,063 for the ‘Tiffany’ name, first registered in 1868, and 4,018,341 for the ‘T & CO’ trademark.

In a statement, Costco denied any wrongdoing and said the ruling is a “product of multiple errors in pre-trial, trial and post-trial rulings, and intends to appeal”.

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More on this story

15 October 2018   A beautician in the UK has said she will defend her rights after being allegedly threatened with a trademark opposition by Tiffany & Co against an application.
9 January 2019   Wholesale company Costco has lost a bid to reverse or reduce a $19.4 million judgment against it in a lawsuit filed by jewellery retailer Tiffany & Co for unlawfully using its trademark on engagement rings.