Nina Ricci, SARL v. Gemcraft Ltd.

• Decision Date: 09 July 1985
• Docket Number: No. 85 Civ. 2044 (SWK).,85 Civ. 2044 (SWK).
• Citation: 612 F. Supp. 1520
• Parties: NINA RICCI, S.A.R.L. and Jacqueline Cochran, Inc., Plaintiffs, v. GEMCRAFT LTD., Alcourt and Associates, Ltd., and Jaytab Industries, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

612 F. Supp. 1520

NINA RICCI, S.A.R.L. and Jacqueline Cochran, Inc., Plaintiffs, v. GEMCRAFT LTD., Alcourt and Associates, Ltd., and Jaytab Industries, Inc., Defendants.

No. 85 Civ. 2044 (SWK).

United States District Court, S.D. New York.

July 9, 1985.

COPYRIGHT MATERIAL OMITTED

Cowan, Liebowitz & Latman, P.C. by Arthur J. Greenbaum, Louis J. Ederer, New York City, for plaintiffs; Mattern, Ware, Stoltz & Fressola, P.C. by Robert H. Ware, Melvin I. Stoltz, New York City, of counsel.

Cooper, Dunham, Clark, Griffin & Horan by Gerald W. Griffin, Peter D. Murray, Thomas G. Carulli, New York City, for defendants.

MEMORANDUM OPINION AND ORDER

KRAM, District Judge.

This case involves a malodorous dispute between the manufacturers of two fragrant perfumes over the right to use the words "L'Air" in the appellation of their products. Plaintiffs have moved for a preliminary injunction barring defendants from calling their perfume (and any new related products they market) "L'air D'or." For the reasons stated below, plaintiffs' motion is denied.

BACKGROUND

Plaintiffs commenced this action on March 15, 1985, by filing a complaint alleging trademark infringement, unfair competition, and dilution under New York law. On the same day, plaintiffs moved for a temporary restraining order and a preliminary injunction restraining defendants' activities. The parties stipulated to certain voluntary restraints upon defendants' activities and to a briefing schedule on plaintiffs' motion for a preliminary injunction. The Court has received lengthy, and excellently prepared, briefs from the parties and numerous affidavits detailing some of the facts involved. The Court further held an evidentiary hearing on April 4, 1985, which was continued and completed on April 15, 1985. Based upon the pleadings, the briefs and affidavits submitted on the motions, and, especially, the evidence adduced at the hearing, the Court makes the following findings of fact and conclusions of law.

FINDINGS OF FACT

Plaintiff Nina Ricci, S.A.R.L. ("Ricci"), a French corporation doing business as "Parfums Nina Ricci — Paris," is a major international manufacturer of, among other things, cosmetics, perfumes, and other toiletries. Plaintiff Jacqueline Cochran, Inc. ("Cochran"), a New Jersey corporation with offices in New York City, is the exclusive distributor in the United States of Ricci's perfumes and related products. Ricci manufactures and Cochran distributes and sells a well-known fragrance line under the name "L'Air du Temps."¹ Ricci is the owner of a federal trademark registration for L'Air du Temps for perfumery, registered on June 4, 1946, and renewed on June 4, 1966.

L'Air du Temps has been sold in the United States since 1947. Currently, L'Air du Temps is available in many forms, including the following: perfume; eau de perfume; eau de toilette; lotions; dusting powder; soaps; bath oils; and creams. L'Air du Temps products are available in approximately 3,000 stores and boutiques around the country. L'Air du Temps now ranks among the five best-selling fragrance lines in the United States with annual wholesale sales of approximately $40 million. Plaintiffs spend approximately $10 million annually on advertising and promoting L'Air du Temps products.

L'Air du Temps perfume is bottled in a unique flacon manufactured by Lalique, a French crystal maker. Perched atop the stopper on this crystal flacon is a pair of doves. The other L'Air du Temps products are packaged in glass or plastic containers, most of which bear doves either molded or embossed thereon. All the L'Air du Temps products are boxed in pale yellow cardboard boxes, and many are wrapped with a pale yellow wrapping paper, each prominently displaying the name Nina Ricci and also the name L'Air du Temps.

For the Christmas 1984 selling season plaintiffs decided to change the packages of some of the L'Air du Temps products (except the perfume), apparently in an attempt to "modernize" and upgrade the packaging. In this regard new containers were produced for some of the products with gold doves and assorted flora embossed on the glass containers. Other of the products were wrapped in gold wrapping paper also bearing the imprint of doves and assorted flora. Plaintiffs, in this action, refer to that new packaging as the "golden theme." Plaintiffs expended a great deal of time, effort, and money promoting this new collection of L'Air du Temps products, and referred to the items repackaged in this promotion as the "Les Colombes d'Or" collection.² The name "Les Colombes d'Or," however, was not used in any promotions directed at the consumer, nor is it inscribed on any of the gold packaging used for the collection. Indeed, there is no indication that any consumer has ever seen or heard the term.

Defendant Alcourt and Associates Ltd. ("Alcourt") is a Canadian company engaged primarily in the graphic printing business. Defendant Gemcraft Ltd. ("Gemcraft") is a Canadian company engaged primarily in the manufacture of fine jewelry. Defendant Jaytab Industries Ltd. ("Jaytab") is a New York company engaged primarily in the sale of precious stones used in the manufacture of jewelry. In addition to their normal operations, Alcourt manufactures and Gemcraft and Jaytab distribute a unique perfume containing flakes of pure gold currently being marketed under the name "L'air D'or."³

Defendants expended a great deal of time, effort, and money developing the perfume product and preparing advertising and promotional materials to introduce L'air D'or perfume to the marketplace. L'air D'or perfume was introduced first at a jewelry trade fair in Canada in July, 1984. L'air D'or was then made available to the general public in Canada for purchase at Birk's jewelry stores sometime in mid-September, 1984. L'air D'or was introduced for sale in the United States at Bloomingdale's department stores in mid-November, 1984. At present L'air D'or is available only as a perfume (in two generally available sizes—one-quarter ounce and one ounce). Defendants hope to expand the product line into other toiletry forms, such as colognes, dusting powders, lotions, and soaps. L'air D'or perfume can be purchased in a limited number of department stores, perfumeries, and jewelry stores in the United States.

L'air D'or perfume is bottled in a miniature decanter-like bottle. The bottle is then housed in a plush burgundy velvet vault-like box, which, in turn, is packaged inside a burgundy cardboard box. The boxes are then wrapped with burgundy wrapping paper. The boxes and the wrapping paper are emblazoned with the L'air D'or logo.

DISCUSSION

Plaintiffs have moved for a preliminary injunction which would

enjoin and restrain defendants, their agents, servants, employees and attorneys and all persons in active concert and participation with them, ... from, in any manner, either directly or indirectly, using L'AIR or L'AIR D'OR, alone or in combination, as trademarks in connection with the sale, offering for sale, promotion and advertising of perfumes and fragrance products, or using any other colorable imitation of plaintiffs' trademark L'AIR DU TEMPS or L'AIR, alone or in combination with plaintiffs' trademark LES COLOMBES D'OR; or from otherwise falsely designating or representing the origin of defendants' goods or suggesting in any way that defendants' goods have been approved or sponsored by, or are in any way associated or connected with plaintiffs; or from unfairly competing with plaintiffs by trading off plaintiffs' business reputation and goodwill, and by diluting plaintiffs' distinctive L'AIR DU TEMPS and L'AIR marks.

The test of whether a party is entitled to the extraordinary relief of a preliminary injunction is well established in this Circuit. In order "to obtain a preliminary injunction, a plaintiff must ordinarily show `(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief.'" Stewart v. INS, 762 F.2d 193, 198-99 (2d Cir.1985) (quoting Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979)). As the quoted standard indicates, a showing of irreparable harm is a requisite element for obtaining a preliminary injunction under either prong of the standard — it is "an absolute requirement for an award of injunctive relief." Stewart, at 199; see also Buckingham Corp. v. Karp, 762 F.2d 257, 262 (2d Cir.1985) ("The linchpin of such interim relief is that threatened irreparable harm will be prevented by that injunction."); Triebwasser & Katz v. American Telephone & Telegraph Co., 535 F.2d 1356, 1359 (2d Cir.1976); Sugarhill Records Ltd. v. Motown Record Corp., 570 F.Supp. 1217, 1219 (S.D.N.Y.1983). The Court finds that plaintiffs in this case have not made a sufficient showing of irreparable harm to justify injunctive relief.

Plaintiffs correctly argue that a showing that there is a substantial likelihood of confusion between the marks or the products constitutes a sufficient showing of irreparable harm to justify injunctive relief in a trademark infringement case. See In re Vuitton et Fils, S.A., 606 F.2d 1, 4 (2d Cir.1979). Plaintiffs must also show that this likelihood of confusion exists in order to demonstrate their likelihood of success on the merits of their federal claim, see Spring Mills, Inc. v. Ultracashmere House, Ltd., 689 F.2d 1127, 1129 (2d Cir. 1982), and their state anti-dilution claim, see Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445, 451-52 (S.D.N.Y. 1982). The test of whether there is a likelihood of confusion is whether "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Spring Mills, Inc., 689 F.2d at 1129 (quoting Mushroom Makers, Inc. v. R.G. Barry...