Tiffany Wins Costco Trademark Litigation Battle

(IDEX Online News) – The US District Court for the Southern District of New York has ruled in favour of Tiffany & Co in its suit against wholesale giant Costco. The court denied Costco's claim that “Tiffany” is a generic term for a pronged ring and further found that Costco was liable for trademark infringement and trademark counterfeiting in its use of "Tiffany" on signs in the jewelry cases at Costco to describe certain engagement rings that were not made by Tiffany & Co.

The lawsuit was launched in 2013 after the luxury jeweler alleged that Costco led its members to believe they were purchasing authentic Tiffany products at significant discounts.

The action arose after a customer alerted Tiffany to the sale of what was promoted on in-store signs as “Tiffany” diamond engagement rings at a Costco store in Huntington Beach, California in November 2012.

“We now know that there are at least hundreds if not thousands of Costco members who think they bought a Tiffany engagement ring at Costco, which they didn’t. Costco knew what it was doing when it used the Tiffany trademark to sell rings that had nothing to do with Tiffany. This is not the kind of behavior people expect from a company like Costco,” said Jeffrey Mitchell of Dickstein Shapiro, Tiffany’s counsel in the case in 2013.

“The Tiffany brand has been damaged, Costco members have been damaged, and Costco has profited from the sale of engagement rings by misrepresenting what they were,” he said.

"We are gratified that the Court found that Costco's use of the Tiffany trademark infringed on our rights" said Leigh Harlan, Tiffany & Co. senior vice president, secretary and general counsel. In rendering its decision, the court concluded that "Tiffany had proffered uncontroverted evidence demonstrating the strength of its mark." Ms. Harlan added, "We believe this decision further validates the strength and value of the Tiffany mark and reinforces our continuing efforts to protect the brand."

Tiffany says it maintains an aggressive and rigorous intellectual property program, and regularly takes actions against counterfeiters and infringers.