In trademark infringement cases, counterfeits are worth their weight in gold. While ordinary infringement entitles the mark owner to some monetary damages, those damages can triple if the court finds the infringing product is a counterfeit. The Lanham Act defines “counterfeit” as a product that is “identical with, or substantially indistinguishable from,” a registered trademark.[1] A counterfeit is more than ordinary infringement, it is making an exact copy to trick a consumer rather than just a similar product to confuse a consumer.
In Coty, Inc., et. al. v. Excell Brands, LLC, Excell Brands produced fragrances styled after high-end competitors, using their logos, color scheme, fonts, and everything else. One of the labels of Excel Brands’ products said “Eternity, by Calvin Klein,” but in smaller, almost hidden font read “our version of – Eternity, by Calvin Klein.” The difference between the original and the infringing product besides the small label was a disclaimer on the box that said “Not Associated with the makers of Eternity, by Calvin Klein.” When Coty, Inc. successfully sued for trademark infringement, they also requested treble damages on the basis of counterfeit.
However, the court found clear evidence of trademark infringement by confusion, but held that the infringement did not rise to the level of trickery because the disclaimer created enough of a contextual difference for consumers not to be tricked. We are left, then, to ponder the difference between confusion and trickery. The difference can be simply a hardly perceivable disclosure.
[1] 15 U.S.C. § 1127.
