All images featuring colorful Rolex watches have been scrubbed from La Californienne’s Instagram page and its other social channels temporarily suspended, as the custom watch company has managed to settle the lawsuit that Rolex filed against it. In a jointly-filed judgment by consent and permanent injunction both dated May 28, the court has signed off on a final judgment in favor of Rolex and against La Californienne in connection with the trademark infringement, counterfeiting, and unfair competition lawsuitthat Rolex filed in November 2019. 

In accordance with the judgment and injunction, which Judge Gary Klausner of the U.S. District Court for the Southern District of New York signed late last week,  La Californienne is subject to a final judgment for trademark counterfeiting, trademark infringement, and false designation of origin and unfair competition, and permanently barred from engaging in an array of specific conduct, namely, “using any of the Rolex registered trademarks or any reproduction, counterfeit, copy or colorable imitation of the Rolex registered trademarks in connection with the advertisement, promotion, offering for sale, or sale of its altered Rolex watches.” 

The Los Angeles-based company – which is in the business of customizing authentic, pre-owned luxury watches, including Rolex models, and selling them by way of established retailers, like Farfetch and Goop, for upwards of $6,500 – is also barred from “engaging in any course of conduct likely to cause confusion, deception, or mistake, or dilute the distinctive quality of the Rolex registered trademarks.” Additionally, La Californienneis legally prohibited from using or continuing to use the Rolex marks on its “website, the Internet (either in the text of a website, or as a keyword, search word, metatag, or any part of the description of the site) or in any promotion or advertising in connection with its altered Rolex watches or any goods or services not authorized by Rolex.” 

In short: the parties’ settlement enables La Californienne to continue to customize and sell Rolex watches, but not with Rolex’s name or its various trademarks, such as its crown symbol, attached to the watches, themselves, or on any advertising of the watches. 

The terms of the parties’ agreement give La Californienne 10 days to “take all steps necessary to remove from [its] websites, or any other website containing content [it has] posted … offering for sale altered Rolex watches,” which is why its Instagram is now devoid of any Rolex offerings.  “Notwithstanding the foregoing,” the Judgment states that, ”if asked, La Californienne can advise that its altered Rolex watches were formerly vintage Rolex watches” that have since been modified.” 

The settlement comes just days after the parties filed a Proposed Stipulated Judgment by Consent and Permanent Injunction, which was shot down by the court – without prejudice – on the basis that it “resolves only a portion of the parties or claims.” Rolex and Californienne swiftly followed up with an amended filing, which was approved by the court, and brings the case to an end prior to trial. While the previous filing made mention of a confidential settlement agreement, which may have included monetary damages to be paid by La Californienne to Rolex in connection with its previous uses of the Rolex marks, the new filing makes no mention of a confidential agreement or any monetary damages. It does state that “each party shall bear their own attorney’s fees and costs.”

As for La Californienne’s current offerings, it is still selling modified Cartier watches, using Cartier trademarks both on the watches, themselves, and in its descriptions and advertising of those watches, a practice that it argued (in the Rolex case) falls neatly within the nominative fair use doctrine, a specific type of fair use, the nominative kind allows – according to the Ninth Circuit, at least – for the “reasonably necessary” use of another party’s trademark solely to identify that party or its products as long as such descriptive use does not “suggest sponsorship or endorsement by the trademark holder.” (It would have been striking – and potentially quite telling for other pending cases – to see which way the court sided on La Californienne’s fair use argument). 

Cartier, which is no stranger to litigation (although seemingly a bit less aggressive than Rolex, which has gone so far as to sue a similarly named New York deli in the past), has not initiated legal action against La Californienne. 

As noted in our recent article about the parties’ initial Stipulated Judgment by Consent and Permanent Injunction, the case is a particularly interesting one given that it centers on Rolex’s notorious bright-line rule for how it distinguishes between authentic and counterfeit products (according to Rolex, if sizable changes have been made to an otherwise perfectly authentic watch, that a watch becomes a counterfeit). That definition of counterfeiting – which seems to be broader than the definition of a counterfeit as set forth by the federal trademark statute – is proving to be less than unusual, with Chanel, for instance, pointing to a variation of it in the suit that it filed against What Goes Around Comes Around (“WGACA”). 

In that case, Chanel is arguing that the luxury reseller has “built its business by piggybacking on the reputation of a handful of select luxury brands – including Chanel,” and has been actively selling infringing goods and attempting “to deceive consumers into falsely believing [that it] has some kind of approval of or relationship or affiliation with Chanel or that Chanel has authenticated WGACA’s goods in order to trade off of Chanel’s brand and good will.”

In particular, Chanel has taken issue with WGACA’s alleged modification of Chanel products prior to selling them, with counsel for the Paris-based brand arguing in a recent correspondence with the court that “it would be possible to imagine a case ‘where the reconditioning or repair [of a product] would be so extensive or so basic that it would be a misnomer to call the article by its original name, even if the words ‘used’ or ‘repair’ were added.” That case is still underway in the U.S. District Court for the Southern District of New York.

*The case is Rolex Watch U.S.A., Inc. v. Reference Watch LLC d/b/a La Californienne; Courtney Ormond; and Leszek Garwacki, 2:19-cv-09796 (C.D.Cal).

A new group of diamonds stands out as being more perfect than almost all others in the $14 billion global diamond market. They are “chemically, physically and optically identical to a mined diamond,” according to the BBC. Decades in the making, as the first-ever man-made diamonds were created in a lab in Upstate New York by General Electric in December 1954, the market for lab grown diamonds is increasingly finding favor among a growing number of companies and consumers, the latter of which are warming up to the idea of buying diamonds that have not been extracted from the mountainous expanse of the Republic of Sakha in Russia or from mines in Botswana, many of which are operated by De Beers, and instead, are coming out of labs in Silicon Valley or in Portland, Oregon.

Unsurprisingly, millennials are said to be driving this growing interest, tempted by the marked affordability of these alternatives, and the lack of potential human rights abuses tied to the “cultured” stones, which are “visually identical” to “the real thing.”

It is against this background that the lab-grown diamond industry is expected to growth significantly within the next several years. According to Morgan Stanley, by the end of 2020, the market for lab-grown diamonds could account for 15 percent of the gem-quality diamond market, up from less than 1 percent in 2016. At the same time, Bain & Co. asserted in its 2018 “Global Diamond Industry Report” that “lab-grown diamonds are clearly here to stay,” particularly in light of “generational shifts in consumer preferences.”

From De Beers to the FTC

With such a potential for growth in connection with the popularity of synthetic diamonds at play, even traditional jewelers, such as De Beers – the stalwart diamond purveyor that coined the phrase “A Diamond is Forever” in 1947 – which have been largely been reluctant to be too praiseworthy of this new category of diamonds for obvious reasons, are paying attention.

De Beers – the 133-year old mining-and-trading company that maintained a monopoly over the supply of the world’s mined diamonds until the late 1990s – has made moves in the diamond growing space, making headlines in late 2018 when it announced that it would invest nearly $100 million over four years to build a factory in Georgia that will churn out 500,000 carats of lab-grown gems per year to be sold under its Lightbox brand.

Although, even as De Beers diversifies, it is not changing its primary tune. In fact, CEO Bruce Cleaver expressed some skepticism of the movement as a whole last year, asserting that unlike the prices of its mined diamonds, which remain relatively steady over time, “wholesale prices for lab-grown diamonds have fallen by up to 60 percent since the company began selling synthetic stones for jewelry in September 2019.” He added that “margins for the sector would continue to fall as improved technology increases the quality and volume of lab-grown diamonds,” according to Reuters

The Federal Trade Commission (“FTC”) has been paying attention. In July 2018, the government agency – which is tasked with promoting consumer protection – issued updated Guides for the Jewelry, Precious Metals, and Pewter Industries that aim to prevent the use of deceptive representations by jewelry companies about their offerings, including lab-created diamonds.

In particular, the FTC “cautions marketers against using any gemstone name (e.g., diamond) to describe any man-made product unless an equally conspicuous ‘laboratory-grown,’ ‘laboratory-created,’ ‘[manufacturer name]-created,’ ‘synthetic,’ ‘imitation,’ or ‘simulated’ disclosure immediately precedes the name.” More than that, the FTC notes that marketers should use this terminology “only for products with essentially the same optical, physical, and chemical properties as the named stone.”

Last spring, the FTC confirmed that it had sent letters eight unnamed jewelry marketers “warning them that some of their online advertisements of jewelry made with simulated or laboratory-created diamonds may deceive consumers, in violation of the FTC Act.” The FTC noted in a statement that its letters specifically took issue with “examples where the advertising might imply that a simulated diamond is a lab-created or mined diamond, or that a lab-created diamond is a mined diamond, or where required disclosures about the source of the diamonds are not proximate to the individual product descriptions.”

In taking a stance on the terminology, the FTC is – in some way, at least – seemingly speaking to the potential staying power of the lab grown diamond market.

A Question of Value

As for what the rise of these alternative diamonds means for the likes of De Beers and other traditional purveyors of mined diamonds, not everyone is convinced that the rise of lab grown sparklers will be a deal breaker any time soon. While Bain & Co. notes the acceleration in the burgeoning field, it also asserts that “if the natural diamond industry can differentiate its stones from lab-grown diamonds (perhaps positioning lab-grown diamonds as fashion jewelry rather than luxury items), the effect on natural diamond demand by 2030 will be limited up to 5 percent to 10 percent in value terms.”

“Ultimately,” Bain asserts that “marketing and consumer perception” will be the determining factors when it comes to the effect that lab-grown diamonds have on the natural diamond market,” pointing to three scenarios: one in which “consumers perceive lab-grown and natural diamonds as interchangeable,” another in which they see them “as two different products,” or a third in which they fall “somewhere in between.” The consultancy states that “marketing could uphold the value of natural diamonds, especially if the prices of lab-grown diamonds continue to drop; and it’s probable that consumers will view lab-grown diamonds as fashion jewelry but not luxury goods, limiting the effect on natural diamond demand.”

Meanwhile, as Robert H. Frank, a professor of management at economics at Cornell’s Johnson Graduate School of Management, wrote for the New York Times, “Not even perfect replicas will extinguish strong preferences for mined diamonds.” In the short term, Mr. Frank suspects that nothing will change, including prices.

But beyond that, the lack of rarity in large, perfectly cut and colored diamonds might have an impact. “Longer term,” he says, the price premiums associated with real diamonds “may prove fragile.” Why? Because “wearing large diamonds, for example, will no longer be likely to signal significant wealth or attract admiring glances,” he says. “Tumbling prices will transform many longstanding social customs. An engagement diamond, for instance, will lose its power as a token of commitment once flawless two-carat stones can be had for only $25.”

While “technology won’t eliminate [the] need for suitable gifts and tokens of commitment, of course, and such things will still need to be both intrinsically pleasing and genuinely scary,” what it will change is “where those qualities reside.”

In an interview last month, David Yurman reflected on the effect that the COVID-19 virus is having on his globe-spanning brand. “We’re trying to figure out how we can actually still do business in this environment,” the man behind the privately-held label told the Wall Street Journal. “We’re trying to figure out how we financially survive this.” The 40-year old brand, which generates an estimated $650 million in sales each year, is not immune to the mandated non-essential business closures and the drop in consumer spending that are directly impacting the jewelry industry as a whole, and the purveyors of non-essential consumer goods, more generally.

The luxury market – jewelry companies included – are expected to take some of the hardest hits as a result of the spread of COVID-19 due to the inherently-discretionary nature of their offerings. Tiffany & Co., for one, has closed stores across the globe; postponed the rollout of its new T1 collection, one that “the company hoped would drive its business forward into the second half of the year;” and expects its acquisition by LVMH Moët Hennessy Louis Vuitton to be pushed back to “the end of 2020,” as opposed to the formerly-cited “middle of 2020” range.

As a whole, the iconic jewelry company – which says that in addition to safeguarding its workforce in light of COVID-19, it is “focusing on … returning to normal operations” – expects to take a significant hit to its bottom line for the year as a result of the deadly virus, already reporting a drop in sales for the quarter ending January 31, 2020, “which included the onset of the coronavirus outbreak in China,” according to the WSJ.

Despite the fact that sales are likely to continue to plummet for jewelry companies and other luxury entities (luxury, as a whole, is slated to lose between $450 billion and $600 billion in sales in 2020, alone, due to the Coronavirus), industry stalwarts – whether it be Yurman, Tiffany & Co. (which currently has a $15.55 billion market valuation), or LVMH-owned Bulgari, for instance, that latter of which is reportedly among the jewelry companies already seeing recovery in China – will almost certainly weather the storm that is COVID-19. They are also relatively well-positioned to withstand the financial implications that are likely to follow from the global health pandemic as consumers remain out of work and recessionary spending habits kick in.

This is due, in part, to the level of consumer recognition that exists in connection with these world-famous brand names; something that has been built up and maintained over decades. Diversified supply chains that are inherently more capable of offsetting disruption, strong e-commerce capabilities (particularly in a direct-to-consumer capacity), and sizable cash reserves also play a large role in helping to sustain big-name brands in times of volatility. 

But what about the smaller companies that do not have decades of name-recognition to lean on, and that are oftentimes more reliant on wholesale orders and third-party retailers than their more time-tested counterparts? The prospects are not necessarily as rosy. 

“Sales have and will continue to take a tremendous hit for jewelry companies,” says publicist Francesca Simons, whose client roster consists exclusively of jewelry brands, which range from Martyre, the Los Angeles-based jeweler that recently teamed up with former One Direction member Zayn Malik, to California-based fine jewelry brand KATKIM. Even if brands maintain a strong e-commerce presence, she says that “most production [facilities] are closed, meaning that brands cannot create pieces to sell to their customers.” As a result, sales are dropping to zero in some cases, which is something that no small number of indie brands are equipped to handle, as few “have enough funds readily on hand to support them while they ride this wave out.”

As for brands that have stock on hand that was slated for delivery to retail partners, Simons says that many retailers “have cancelled [orders] entirely or altered the original terms and requested large discounts” to the detriment of the brands, while trade shows are being cancelled outright or postponed, thereby, calling for a “restructuring of the wholesale dynamic” with brands scrambling to host “virtual meetings, tours, and virtual collection launches” in place of “in-person meetings, desk-sides, and collection previews.”

The restructuring that Simons refers to can potentially run pretty deep. For KATKIM founder Katherine Kim, COVID-19 does not merely mean putting production of the brand’s bespoke engagement rings on hold in order to “ensure the health and safety of our team,” and thus, “putting delays on the timelines of delivery,” it means that the day-to-day operations look drastically different than they did just a few weeks ago. “I have 2 children at home – a 7 year old and a 4 year old. So, my role has completely shifted from running my business to doing that while juggling homeschooling and getting to all my emails and requests.” 

“I am dreaming and sketching ideas of the next piece I want to create once we are able to get into the studio,” Kim states, but as of now, California’s non-essential businesses remain on lockdown, like others across the country, for the foreseeable future.

“Due to the government mandate, our studio remains closed so we cannot have any in-person meetings,” says Grace Lee, who started her Los Angeles-based eponymous jewelry brand in 2008. “All of our fine jewelry is custom made-to-order so we are not able to produce currently since our production facilities remain closed, as well.”

Lee is using this time to “focus on creating new designs and keeping in communication with [her] clients,” while also “fine tuning her brand’s website,” which has e-commerce capabilities. Her biggest concern in light of the swiftly changing landscape? “Not being able to pay our employees.” As of now, Lee says that she has “not made any cuts to pay or benefits,” and hopes her company “can continue to provide full compensation until the COVID crisis passes.”

This emphasis on digital is something that fellow jewelry designer Kimberly McDonald shares. To date, McDonald – who counts Michelle Obama, Cindy Crawford and Cameron Diaz, among others, as fans – has sold exclusively through third-party retailers like Bergdorf Goodman, Neiman Marcus, Moda Operandi, and Net-a-Porter. This has been an effective model for her brand, but given the onset of the virus, McDonald says that she and her team are focusing on launching the brand’s e-commerce site, from “creating content to working on the technical aspects of the website.” 

But more than merely bringing her jewelry directly to consumers by way of a brand-owned and operated e-commerce site, a move that comes with a slew of benefits (including but not limited to a lessened reliance of third-party retailers and increased control over how the products are merchandised and sold), McDonald says that there is something bigger at play. In putting their focus on the brand’s own e-commerce capabilities and the narrative around the brand and its offerings, McDonald and her team are working on something that goes beyond just where the brand stocks its pricey gold-and-diamond jewelry; they are preparing for what the future will look like for brands after the immediate impact of COVID-19 subsides, which is expected to be radically different from the pre-COVID landscape.

In other words, McDonald says, “We brainstorming about how to introduce a new way to purchase [our jewelry] in what is sure to be a new retail market that emerges in the wake of all of this.”

Over the weekend of October 26, 2019, rumors began to swirl with intensity that a multi-billion deal was quietly coming into fruition between LVMH Moët Hennessy Louis Vuitton and Tiffany & Co. Within days, it would become clear that there was merit to the chatter, with Tiffany & Co. revealing that it had, in fact, “received an unsolicited, non-binding proposal from LVMH to acquire Tiffany for $120 per share in cash.” However, the New York-headquartered jewelry company was said to have swiftly  “rebuffed” the $14.5 billion offer.  

Within weeks, more of the closely-guarded story had unfolded. Despite the board for the 182-year old Tiffany & Co. reportedly rejecting LVMH’s initial offer as “too low to become the basis for negotiations,” the parties – which used codenames in connection with their behind-the-scenes dealings to prevent leaks (Tiffany used “Tea” and LVMH went by “Latte,” according to Reuters, in a nod to famed film “Breakfast at Tiffany’s”) – did not part ways. In fact, despite the pushback, LVMH “remained engaged,” Reuters reported in November, and began “considering a new offer” for Tiffany in furtherance of its quest to bolster the smallest division under its sweeping ownership umbrella: jewelry. 

By late November, the two giants had sealed their deal. In a statement released on November 25, LVMH declared that it, “the world’s leading luxury group,” and Tiffany & Co., “the global luxury jeweler … have entered into a definitive agreement whereby LVMH will acquire Tiffany for $135 per share in cash, in a transaction with an equity value of approximately $16.2 billion.” 

It would be the largest deal in the fashion/luxury space; topping the $13 billion bid that LVMH paid to bring the long-affiliated Christian Dior brand under its ownership umbrella in 2017.  

The two luxury players had come to terms, but the deal, itself, was not quite done (and still is not). That would require the approval of Tiffany’s shareholders, for one thing, something that was accomplished by way of a “special meeting of Tiffany & Co. stockholders” on Tuesday. In a statement, LVMH asserted that the publicly-traded jewelry company’s shareholders have “voted overwhelmingly to approve the previously announced merger agreement.”  

The vote in favor of the parties’ “merger agreement” (and the terms associated with it) – which Tiffany & Co. said in a release in December was “recommended to stockholders” by the jewelry stalwart’s board of directors – was “largely expected,” according to investing insight publication Motley Fool. But the seemingly smooth merger-in the-making is not without at least some pushback. Underway in the background of the nearly-culminated acquisition is a pending challenge. 

According to a complaint that was rather quietly filed with a federal court in Delaware last month, Tiffany & Co. stockholder John Thompson has accused the jewelry company and its board of directors of submitting a proxy statement to the U.S. Securities and Exchange Commission (“SEC”) on December 18 that is “false and misleading” as a result of its failure to include “material information with respect to the proposed transaction.”

In the lawsuit that Thompson filed on behalf of himself and other “similarly situated” individuals (i.e., the “hundreds, if not thousands” of other public holders of the outstanding 119,943,050 shares of Tiffany common stock”), he accuses Tiffany and its board members of violating sections of the Securities Exchange Act of 1934, a federal law that governs the trading of securities in the U.S., by “disseminated [a] false and misleading Proxy Statement.” 

“By virtue of their positions within the company, the individual defendants were aware of [the] information [required to be included in the Proxy Statement] and their duty to disclose this information,” and yet, failed to meet those requirements, Thompson argues by “omitting material information regarding [Tiffany’s] financial projections,” and “the analyses performed by the Company’s financial advisors in connection with the Proposed Transaction, Centerview Partners and Goldman Sachs,” among other things.

More than that, Thompson claims that Tiffany and its board did not set out “the circumstances under which the ‘additional discretionary fee of up to approximately $16 million’ is payable to Goldman, and whether the individual defendants intend to pay Goldman this fee.” This is crucial, he argues, as“full disclosure of investment banker compensation and all potential conflicts is required due to the central role played by investment banks in the evaluation, exploration, selection, and implementation of strategic alternatives.”

As a result of the foregoing, Thompson – who does not specify how many shares he holds in the company in his complaint – claims that he and the potential class of fellow plaintiffs “are threatened with irreparable harm” unless the court “preliminarily and permanently enjoins the defendants and all persons acting in concert with them from proceeding with, consummating, or closing” the LVMH merger. He has also asked the court to require Tiffany to “disseminate a Proxy Statement that does not contain any untrue statements of material fact and that states all material facts required in it or necessary to make the statements contained therein not misleading.” 

In a release late last month, Wilmington, Delaware-based law firm Rigrodsky & Long, P.A., which is representing Thompson, stated that at the heart of the lawsuit is “an attempt to secure shareholder support for the proposed transaction,” which Tiffany allegedly facilitated by issuing “materially incomplete disclosures in its proxy statement.” 

Despite the pending litigation, Motley Fool’s James Brumley states that the acquisition “is still expected to close in the middle of 2020, subject to the receipt of regulatory approvals and satisfaction or waiver of other customary closing conditions.” 

A rep for Tiffany & Co. did not respond to a request for comment.  

UPDATED (February 13, 2020): Counsel for Thompson filed a notice of voluntary dismissal on February 12 (potentially as a result of a settlement between the parties), and on February 13, the court formally closed the case.

*The case is John Thompson v. Tiffany & Co., et al, 1:20-cv-00009 (D.Del.)  

In April 2018, a woman named Tiffany Parmar set out to register the name of her small, Cotswolds-based business with the United Kingdom Intellectual Property Office (“UKIPO”). She was in the process of expanding her business Cotswold Lashes by Tiffany – which she had renamed from “Beauty by Tiffany” in order to emphasize her focus on eyelash extension treatments – from the beauty services she offers from her home to include business-to-business sales of her proprietary lash extension products and classes to enable other budding “lash technicians” to meet the booming demand in the burgeoningly popular eyelash extension market.

Given that she had “invested in quite a lot of [cosmetic] products” bearing her brand’s name, Parmar wanted to “protect herself,” and so, that April, she enlisted legal counsel to file a trademark application for her company name in three classes of goods/services: class 3, which broadly covers cosmetics, but specifically Parmar claimed “eyeliner; eyelashes; eyeshadow; eye gels; eye makeup; eyebrow cosmetics; false eyelashes; cosmetic eye pencils; [and] eye makeup remover;” class 41, in particular “education and instruction in cosmetic beauty;” and class 44 for “hygienic and beauty care” and “beauty treatments.”

Her application for registration was preliminarily accepted by the UKIPO, and published a few months later in furtherance of a pre-registration process by which anyone that believes that they might be damaged by the registration of a pending trademark application may oppose its registration. That is precisely what Tiffany & Co. did.

In October 2018, the New York-headquartered jewelry company lodged a formal opposition to Parmar’s application with the UKIPO. It argued that, among other things, her “Cotswold Lashes by Tiffany” trademark is “very similar” to its own UK and European Union-registered trademarks for “Tiffany & Co.” and “Tiffany,” and  “the goods and services [she listed on her application] for are identical and/or similar to the goods and services for which [Tiffany & Co.’s] earlier marks are registered.” With that in mind, Tiffany & Co. asserted that Parmar’s mark – if registered – “would take unfair advantage of [its] marks” and would “dilute the distinctiveness” of its famous marks.

As it turns out, despite its primary focus on jewelry, Tiffany & Co. maintains trademark registrations in the UK and the EU that extend to “cosmetics,” “soaps,” and “perfumery.” It was here, Tiffany & Co. argued, that the parties had a problem.

The jewelry company would go on to file evidence with the UKIPO, including statements from relevant “witnesses,” as to the nature of its trademark rights in the UK and the fame associated with the Tiffany & Co. name. In one such statement, Lesley Matty, senior legal counsel for Tiffany, asserted that the brand has maintained a presence in the UK market for decades, first “opening a store in London in 1868, which closed during WW2 and re-opened in October 1986 … and now has 12 stores in the UK,” in which it sells “jewelry, wrist watches, perfumes and scents,” among other things.

Matty also provided revenue figures for Tiffany & Co.’s UK operations (as a whole and not specific to cosmetics/fragrances) as topping $981.6 million between 2013 and 2017, during which time the company spent more than $50 million on its advertising efforts.

Fast forward to 2020, and UKIPO trademark hearing officer George W. Salthouse has issued a decision in connection with Tiffany & Co.’s opposition, siding with the jewelry brand on nearly all accounts.

In a decision dated January 8, 2020, as first reported by WIPR, Salthouse determined that Parmar and Tiffany & Co.’s respective trademarks are “at best similar to a low degree,” noting that while “all of the marks [at issue] contain the word TIFFANY,” the placement is different for the rival parties: “it is the first word in [Tiffany & Co.’s] marks but the last word in [Parmar’s] mark.” He did, however, state that despite some differences in the goods/services, themselves, (namely in connection with Parmar’s “hygienic and beauty care” and “beauty treatments” services), the others that Parmar claimed in her application are “fully encompassed” by those listed in Tiffany & Co.’s existing registrations.

Ultimately (and despite his finding that based on the revenue and advertising figures it provided, which he called “respectable but not remarkable particularly given the huge range of goods and services for which its marks are registered,” Tiffany & Co. “cannot benefit from an enhanced degree of distinctiveness through use in relation to the goods and services for which it is registered”), Salthouse handed Tiffany & Co. the win.

The UKIPO hearing officer held that with the foregoing similarities in mind and “allowing for the concept of imperfect recollection,” a legal doctrine that acknowledges that consumers compare trademarks based on their general impression as opposed to a meticulous side by side comparison, “there is a likelihood of consumers being confused, directly or indirectly” about the source of Parmar’s services.

To be exact, Salthouse stated that there is a chance that consumers might be misled into believing that Parmar’s goods and services “are those of [Tiffany & Co.] or provided by an undertaking linked to [Tiffany & Co.] … as simply a slightly different use of the [Tiffany & Co.] marks,” and thus, held that Tiffany & Co.’s opposition is successful and Parmar – who appears to have dropped the “by Tiffany” from the name of her company in the wake of the decision – must pay £1,000 to Tiffany & Co. as a “contribution towards its [legal] costs.”

Hardly the first instance in which a big brand has taken on a small business on trademark grounds and won, Chanel made headlines in August 2014 when it filed suit against Chanel Jones, a Merrillville, Indiana-based woman, who was using her first name in connection with her business, Chanel’s Salon. The Paris-based brand asserted in its complaint that the owner of the spa and beauty salon was infringing at least nine of its federally registered trademarks, while piggybacking on the established reputation of the fashion house.

The house-that-Coco-built would ultimately prevail, with a federal court in Indiana ordering Jones to cease her use of the word “Chanel” in connection with her business in February 2015. Fish & Richardson attorney Cynthia Johnson Walden stated at the time, the case “is a reminder of the well-settled fact that an individual does not have an unfettered right to use their personal name for commercial purposes,” a point that the recent Tiffany & Co. proceedings drive home even further.

As for Parmar, she told TFL in the wake of the UKIPO’s decision that she is “disappointed with the ruling.” She says that she has not “heard from the solicitors who represented me with a decision on whether they want to appeal their decision.”