As reported by Fox News, Martha Stewart, Emeril Lagasse and their companies, as well as the Home Shopping Network, have been sued for trademark counterfeiting in federal court in Florida by a German trade association. The lawsuit stems from the sale of alleged counterfeit knives by the Home Shopping Network under the “EMERIL” brand in connection with “EMERIL” cookware sets. According to the Complaint, one side of the knives contains the marking “SOLINGEN GERMANY,” while the other side contains the marking “CHINA.” The “EMERIL” brand is allegedly owned and controlled by Martha Stewart Living.
The German trade association owns a U.S. registration for the certification mark “SOLINGEN.” A “certification mark” is a type of mark that may be used to certify that goods or services originate in a specific geographic region. Other types of certification marks are used to certify that goods or services meet certain standards in relation to quality, materials or mode of manufacture, or that the labor used in connection with the products or services meets certain standards. Unlike typical trademarks, certification marks do not distinguish the goods or services of one person from those of another.
The Complaint alleges that the certification mark “SOLINGEN” identifies knives, scissors and kitchen cutlery that are made in a specific area in Germany, in much the same way that “CHAMPAGNE” is used to identify sparkling wine from a specific area of France. The city of Solingen is purportedly known throughout the world as the location of quality knife producers, such reputation dating back several centuries.
Counterfeiting is the act of using a third party’s exact trademark, or in this case, certification mark, on unauthorized goods. Counterfeit goods are often cheap imitations of inferior quality, which erodes the goodwill that brand owners painstakingly seek to build. In this case, the Complaint alleges that Stewart, Lagasse, their companies and the Home Shopping Network “knowingly promoted, advertised, and sold” counterfeit products that bear the “SOLINGEN” certification mark. The Complaint questions why none of the Defendants bothered to inquire why the knives at issue were marked “SOLINGEN GERMANY” on one side and “CHINA” on the other.
The Defendants have denied any willful or intentional conduct and have allegedly indicated that they may ship the counterfeit products to China to be “relabeled” or “repurposed.” The German trade association recently filed a Motion for Preliminary Injunction asking the Court to prohibit such a transfer, arguing that “the Court should not permit the counterfeit knife products to go to China, a country rife with counterfeiters,” where the Court would have no control over the products.
Damages for counterfeiting include: (i) the counterfeiter’s profits; and (ii) any damages sustained by the Plaintiff. If, however, it is found that the Defendants intentionally used a counterfeit mark, then the Court is authorized to enter judgment for three times such profits or damages, whichever amount is greater, together with reasonable attorneys’ fees. In cases of willful counterfeiting, the Plaintiff can alternatively elect to recover specific damages authorized by statute, namely, up to $2 million per counterfeit mark per type of goods and services sold, offered for sale or distributed. Thus, it would appear that Martha Stewart, Emeril Lagasse and the Home Shopping Network have some explaining to do as to why the marking “SOLINGEN GERMANY” appears on the knives at issue.
