On July 18, 2018 the well-known luxury goods company, Cartier International AG and Cartier, a division of Richemont North America Inc. (collectively, “Cartier” or “Plaintiffs”) filed suit in the United States District Court for the Southern District of New York against Wholesale Jewelry, Inc. d/b/a Diamond Source (“Defendant”). Plaintiffs’ claims include federal counterfeiting, trademark and trade dress infringement, unfair competition, dilution, and similar claims of trademark infringement and unfair competition under New York common law.
Plaintiffs own four incontestable U.S. trademark registrations for the CARTIER mark, which cover jewelry and articles of jewelry, such as bracelets or earrings. One of Cartier’s jewelry lines is known as the LOVE collection, which is comprised of a variety of jewelry products that each have the appearance of a flat metal band available in white gold, yellow gold, or pink gold with simulated screw head designs and/or diamonds (the “LOVE Trade Dress”).
Plaintiff asserts that its LOVE Trade Dress is exemplified in the bracelet seen below:
Plaintiffs state that the LOVE bracelet shown above was the first item in the LOVE collection, which was designed for Cartier in 1969. Plaintiffs own a number of federal trademark registrations in connection with the LOVE Trade Dress (the “LOVE Marks”). Further, Cartier states that it annually sells millions of dollars of products under the LOVE Marks.
According to the complaint, Defendant operates a jewelry store in New York City where Defendant manufactured, advertised, sold, distributed, imported and/or exported jewelry bearing the LOVE Trade Dress and LOVE Marks, without authorization from Plaintiffs.
Plaintiffs claim that in March 2018, one of Cartier’s agents visited Defendant’s jewelry store where it observed the Defendant selling bracelets and rings with the Plaintiffs LOVE Trade Dress and the LOVE Marks. Plaintiff alleges that some of the bracelets also featured the CARTIER trademark and that Defendant was selling these bracelets for prices ranging from $6,000 to $10,000. Plaintiff claims that its agent later returned to the Defendant’s store and purchased one of the bracelets for $6,000, as shown below from the complaint:
Prior to filing suit, Plaintiffs claim to have sent the Defendant cease and desist letters to which the Defendant did not respond. Plaintiffs also claim that the Defendant’s counterfeit and infringing products compete with Plaintiff’s products and unlawfully wrest control away from Cartier over its reputation, all of which results in irreparable damage to Cartier’s business and goodwill.
Among Plaintiff’s several demands for relief are a permanent injunction enjoining the Defendant from using the CARTIER mark, LOVE Trade Dress and LOVE Marks, or any confusingly similar marks or designs, an accounting of all profits and gains derived from the allegedly unlawful conduct and a court ruling directing the Defendant to turn over all materials in its possession bearing the Plaintiffs’ trademarks or trade dress for destruction. Plaintiffs also seek monetary relief under 15 U.S.C. §1117(a), or statutory damages “up to $2,000,000 per counterfeit mark per type of goods sold, offered for sale, or distributed, as provided by 15 U.S.C §1117(b) & (c).”
It will be interesting to see how Wholesale Jewelry defends itself. Stay tuned.
