Tiffany & Co. is waging a counterfeiting lawsuit against another New York-based jewelry company, accusing it of offering up fake Tiffany jewelry to unsuspecting consumers via a well-known resale platform. In the complaint that it filed in a New York federal court on May 1, Tiffany & Co. claims that early this year, it noticed a “Tiffany & Co. Jean Schlumberger Amethyst Bird on a Rock Brooch” that Defendant Nally Jewels was selling on luxury marketplace 1stdibs for almost $70,000. Tiffany claims that it purchased the brooch from via 1stdibs, which is not named as a defendant in the complaint, and paid a total of $68,805.39.” The problem: Upon “further examination,” Tiffany determined that the brooch “was not a genuine Tiffany product.”
In addition to not being manufactured and/or sold by Tiffany & Co., the brooch was not “approved by, licensed by or otherwise in any way properly associated with” the Tiffany brand, the company states in its new lawsuit. In fact, LVMH-owned Tiffany & Co. argues that its examination of the brooch “yielded various dissimilarities between the brooch and a genuine Tiffany brooch, as well as many unacceptable design deficits that would ordinarily not pass Tiffany’s strict and high-quality standards.”
Not exactly a one-off, Tiffany & Co. alleges that Nally Jewels and Adelina Nalbandian and Hovik Nalbandian, who are also named as defendants, (collectively, “Nally”) has sold “at least four more counterfeit Tiffany & Co. Schlumberger Bird on a Rock pieces [between] July 2021 and July 2022,” generating revenues of $275,000 on these transactions, alone. “Based on [its] examinations of the total five brooches,” Tiffany states that it “has determined that the brooches, although they bear Tiffany registered trademarks” – namely, the TIFFANY, TIFFANY & CO. and TIFFANY & CO. SCHLUMBERGER word marks – are “not consistent with genuine Tiffany merchandise.”
The sale of such counterfeits – which Nally has “intentionally” offered up under the Tiffany registered trademarks “knowing they are the exclusive property of [Tiffany]” and with the aim of “exploiting the goodwill and reputation associated with the Tiffany registered trademarks” – has deprived Tiffany of its ability to control the quality of goods bearing its name, the company argues. And “because of the very real likelihood of confusion as to the source of [Nally’s] products, [Tiffany’s] reputation and valuable goodwill in its trademarks is at the mercy of [Nally’s] unscrupulous tactics.”
With the foregoing in mind, Tiffany & Co. claims that Nally Jewels is on the hook for “willful and intentional infringement of the Tiffany registered trademarks,” as their unauthorized use of the trademarks “is likely to cause confusion and mistake in the minds of the purchasing public, and, in particular, tends to and does falsely create the impression that the goods sold by [Nally] are authorized, sponsored, or approved by [Tiffany] when, in fact, they are not.” Tiffany further asserts that the defendants’ infringing activities are “in total disregard of [its] rights and were commenced in spite of [their] knowledge that the use of any of the Tiffany registered trademarks, or a copy or colorable imitation thereof, was and is in direct contravention of [its] rights.”
Setting out claims of trademark counterfeiting, trademark infringement, and unfair competition, Tiffany & Co. is seeking monetary damages, as well as injunctive relief to bar Nally from continuing to sell Tiffany brand counterfeits, further infringing its registered trademarks by “manufacturing, producing, distributing, circulating, selling, marketing, offering for sale, advertising,” etc. any products not authorized by Tiffany that “bear any simulation, reproduction, counterfeit, copy or colorable imitation of” its trademarks, and using “a false description or representation including words or other symbols tending to falsely describe or represent [Nally’s] unauthorized goods as being those of [Tiffany] or sponsored by or associated with [Tiffany] and from offering such goods into commerce, among other things.
A rep for Nally Jewels did not respond to a request for comment.
The case is Tiffany (NJ), LLC v. Nally Jewels Inc., d/b/a Nally Jewels, et al., 1:23-cv-03631 (SDNY).