Charles of the Ritz Group v. QUALITY KING DISTRIBUTORS, 86 Civ. 4251 (EW).
| Decision Date | 11 June 1986 |
| Docket Number | No. 86 Civ. 4251 (EW).,86 Civ. 4251 (EW). |
| Citation | 636 F. Supp. 433 |
| Parties | CHARLES OF THE RITZ GROUP LTD. and Yves Saint Laurent Parfums Corp., Plaintiffs, v. QUALITY KING DISTRIBUTORS, INC., Deborah International Beauty, Ltd., and Deborah Richman, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Paskus, Gordon & Mandel, New York City (Lile H. Deinard, David S. Klafter, of counsel), for plaintiffs.
Robert L. Sherman, Mineola, New York for defendant Deborah Intern. Beauty Ltd.
Plaintiff Charles of the Ritz Group Ltd. seeks a preliminary injunction enjoining the distribution of defendant Deborah International Beauty Ltd.'s fragrance product sold under the unregistered mark OMNI. In addition to the affidavits and briefs submitted by the parties, the issues have been argued to the Court by counsel. The parties have stipulated that an evidentiary hearing is not required. Upon a close study of the entire record, the Court makes the following determination.
Plaintiff Charles of the Ritz is the owner of a registered trademark OPIUM, used in connection with fragrances produced and marketed by its wholly-owned subsidiary, plaintiff Yves Saint Laurent Parfums Corp. Plaintiffs' OPIUM product line consists of several related fragrance products including perfume, eau de toilette, and bath powder. Its best-selling product in the line is the "Eau de Toilette Natural Spray," as to which infringement by the defendants is claimed. The OPIUM products are packaged in trade dress consisting of an oblong exterior carton colored red and blue, with horizontal gold-colored stripes and "oriental flower" design. The trade dress also bears prominently the mark YVES SAINT LAURENT, used by plaintiff Yves Saint Laurent Parfums Ltd. OPIUM's trade dress, minus the wordmarks, has itself been registered as a trademark used in connection with fragrances, and is also owned by plaintiff Charles of the Ritz Ltd.
The parties apparently are in accord that, in general terms, the perfume industry is divided into two markets: one for "designer" or "luxury" fragrances, which are often imported and which are sold in department stores and boutiques; and "discount" fragrances, which are found in discount stores, drug-stores, and low-end department stores.1 The OPIUM products are sold primarily in department stores and other comparatively high-price retail outlets throughout the United States. Plaintiffs have expended considerable sums of money in advertising and otherwise promoting their OPIUM products.
Defendant Deborah International Beauty Ltd. ("Deborah") is the manufacturer of a fragrance product sold under the unregistered mark OMNI. OMNI is apparently similar in scent to the OPIUM eau de toilette product; the similarity is emphasized by a card visible to the consumer which projects out from the top of each package of OMNI product, bearing the legend "IF YOU LIKE OPIUM YOU'LL LOVE OMNI." OMNI is sold in a trade dress consisting of an oblong carton, colored maroon, bearing the OMNI mark, diagonal stripes and "palm leaves" in gold. In size and appearance the carton is similar to plaintiffs'. OMNI is currently distributed only in a single mass-merchandising drugstore chain; although plaintiffs do not distribute OPIUM products directly to such retail outlets, certain of their wholesale distributors do, and accordingly the two product lines may be found on the same merchandiser's counters.
Defendant's OMNI product is one of eight such products in its line; each product is apparently intended to imitate the scent of another manufacturer's fragrance product selling at a higher price. Defendant's store display contains a set of testers, by means of which the consumer can sample the fragrances. Behind the testers are sample cartons of defendant's product, and behind defendant's sample are photographs of the product which it resembles.
Plaintiffs allege that the defendant infringes plaintiffs' registered trademarks and trade dress. Plaintiffs allege additional causes of action for misidentification of goods in interstate commerce, pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and state law causes of action for unfair competition and trademark dilution. Plaintiffs move for a broad preliminary injunction barring the distribution of OMNI in its current trade dress using the current promotional materials, and barring any use of the OPIUM trademark on the packaging or promotional material for the OMNI product.
The burden which plaintiffs must meet in establishing their entitlement to a preliminary injunction is well-established by the decisions of our Court of Appeals. Plaintiffs must show (1) irreparable harm and (2) either (a) likelihood of success on the merits or (b) that there are serious questions going to the merits and that the balance of hardships tips decidedly in the plaintiffs' favor.2 In trademark cases, "in the preliminary injunction context, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm."3 In essence, plaintiffs make two related claims: first, that defendant's use of plaintiffs' own trademark and trade dress on its packaging and promotional material infringes plaintiffs' trademark rights; and second, that defendant's trade dress infringes plaintiffs' trademark in their own package design.
As previously noted, defendants' package design for the OMNI product includes a tab which rises vertically above the boxtop. Printed on the tab, in white lettering on a maroon background, is the legend "IF YOU LIKE OPIUM YOU'LL LOVE OMNI". On the portion of the tab which is not visible to the consumer until the box is opened, in type half the size of the slogan itself, appears the explanatory legend "Opium is a Registered Trademark Parfum and is not associated in any matter sic with Deborah International Beauty, Ltd." Defendant contends that it is entitled to such use of plaintiffs' OPIUM mark on its product packaging and promotional material as a matter of comparative advertising. Defendant argues that its slogan "IF YOU LIKE OPIUM YOU'LL LOVE OMNI," neither asserts nor suggests any claim of equivalence or superiority between the products, but is merely an encouragement for the consumer to compare. Defendant relies upon the decision of the Ninth Circuit in Saxony Products, Inc. v. Guerlain, Inc.,4 for the proposition that use of a competitor's trademark in comparative advertising is a protected non-infringing use. Saxony involved a manufacturer of "LIKE PERFUMES," which imitated the scent of higher-priced products. Saxony in its advertising displays offered a comparison chart which said of Saxony's Fragrance S product that "If you like SHALIMAR, you'll love Fragrance S." Guerlain, the owner of the registered trademark SHALIMAR, claimed a violation of § 43(a) of the Lanham Act. The Ninth Circuit Court of Appeals upheld Saxony's use of Guerlain's trademark SHALIMAR, saying:
it is clear that for purposes of comparative advertising Saxony could use Guerlain's trademark SHALIMAR to apprise consumers that Fragrance S is "LIKE" or "similar" to SHALIMAR. The use of Guerlain's trademark, however, constituted a violation of the Lanham Act if Saxony falsely represented that Fragrance S was "LIKE" or "similar" to SHALIMAR or if there was a reasonable likelihood that consumers would be confused as to the source of Fragrance S.5
As this passage makes clear, the Ninth Circuit decision in Saxony does not preclude trademark infringement claims based upon comparative advertising where the comparative claim is used in a context which renders consumer confusion likely.
The issue resolves, then, to the question whether the combination of circumstances surrounding defendant...
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