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Tiffany & Co. warns jewelry retailer about imitation of HardWear collection

Tiffany warning letter UWG imitation Hogan Lovells

The renowned New York jeweler Tiffany & Co. is currently taking increased action against jewelry and jewelry stores that offer products that do not comply with the well-known HardWear-collection from Tiffany. About the law firm Hogan Lovells numerous warning letters are sent to small and medium-sized companies in the sector.

Background to the warnings

Tiffany & Co., founded in 1837 and world-famous since the classic film "Breakfast at Tiffany's" (1961), considers the products of other jewelry retailers to be inadmissible imitations of its HardWear collection, in particular the characteristic "U-Lock" design. According to Tiffany, the collection launched in 2017 was heavily advertised and worn by numerous celebrities, which led to a high profile.

Legal basis and allegations

The warning letters from Hogan Lovells are based on the protection against imitation under competition law pursuant to § 4 No. 3 UWG (Act against Unfair Competition). Tiffany accuses the retailers concerned:

  1. Committing an avoidable misrepresentation of origin
  2. Exploiting the good reputation of Tiffany products (reputation exploitation)

Protection against imitation under competition law applies if the following conditions are met:

  1. Competitive character of the original product
  2. Imitation of the product
  3. Unfair exploitation or impairment of the value of the original product or misrepresentation of origin

It is important to note that protection against imitation under competition law does not depend on whether the product was newly designed or designed for the first time by the rights holder. Rather, the decisive factor is whether the design is perceived by the public as an indication of origin to a specific manufacturer.Tiffany argues that its HardWear collection, in particular the characteristic "U-Lock" design, has achieved a high level of recognition due to intensive advertising and use by celebrities. This has created a competitive character that is being unfairly exploited by the similar products of the warned retailers.The legal assessment of such cases is complex and requires a careful case-by-case examination. Affected retailers should have the allegations examined by a specialist lawyer for intellectual property rights in order to develop possible defense strategies.

Claims in the warning letters

The warning letters from Hogan Lovells usually contain the following claims:

  • Submission of a cease-and-desist declaration with penalty clause
  • Information about manufacturers, suppliers and customers of the products
  • Payment of damages
  • Reimbursement of legal fees
  • In some cases: Publication of a "public apology" on the retailer's website

Cost risk for affected dealers

Hogan Lovells often sets the amount in dispute at at least €200,000, which can lead to out-of-court legal fees of over €2,900. In one documented case, an amount in dispute of €250,000 was set for total sales of less than €100 and legal fees of €3,227.90 were demanded.

Recommended actions for affected retailers

  1. Keep calm and observe the deadlines set
  2. Do not provide any premature information or make any admissions of guilt
  3. Have the warning letter checked by a lawyer immediately
  4. Do not sign the pre-formulated cease-and-desist declaration without checking and modifying it
  5. If necessary, have a modified cease-and-desist declaration drawn up
  6. Critically scrutinize the amount in dispute
  7. Examine possible defense strategies

Legal classification and defense options

The question of whether an imitation is actually unlawful within the meaning of protection against imitation under competition law is complex and must be carefully examined on a case-by-case basis. It should be noted that it is not important for protection against imitation under competition law whether the product was newly designed or designed for the first time by the rights holder. Rather, the decisive factor is whether the design is perceived by the public as an indication of origin for a specific manufacturer. Possible defense strategies can focus on the following aspects:

  • Lack of competitive originality: Argumentation that the contested features are not characteristic of Tiffany or are not perceived by the public as an indication of origin.
  • No relevant imitation: Identification of differences between the products that rule out imitation.
  • No unfairness: Proof that there is no misrepresentation of origin or inappropriate exploitation of good reputation, e.g. through clear labeling of own products.
  • Need to keep the design free: Argumentation that certain design features are generally customary and necessary for the industry.

Due to its complexity and the need to consider each individual case, protection against counterfeiting under competition law offers scope for various defense approaches. In the past, specialized lawyers have already succeeded in defending clients successfully and cost-effectively against Tiffany's claims by working out the specific circumstances of each case.

Conclusion

The warnings from Tiffany & Co. show the importance of trademark and design protection in the jewelry industry. A careful legal examination and strategic approach is essential for affected retailers. Expert legal advice can help to fend off disproportionate claims and achieve a favorable solution for the retailer, and those affected should not be afraid to seek legal help. We offer a Free initial assessment to discuss the prospects of success and possible strategies.

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