To secure a permanent injunction in the Second Circuit, a plaintiff must show: (1) irreparable harm and (2) success on the merits. The standard for a permanent injunction is essentially the same as for a preliminary injunction, except that the plaintiff must actually succeed on the merits. In the trade dress context, a showing of likelihood of confusion as to source will establish a risk of irreparable harm.
On December 10, 2001, watch sellers Cartier and Cartier International, B.V. initiated litigation against watch manufacturers Four Star Jewelry Creations, Inc., Crown Jewelry Creations, Inc., and Globe Jewelry, Inc. alleging trade dress infringement, infringement of a registered mark, trademark infringement, patent infringement, false designation of origin, and trademark dilution. The sellers claimed that the manufacturers produced watches that infringed the designs of four families of the sellers' luxury watches.
Was Four Star Jewelry Creations, Inc. liable for trade dress infringement?
The court found that the sellers prevailed on their federal and state law claims of trade dress infringement and their state law unfair competition claim because the sellers' designs had acquired secondary meaning, there was a likelihood of confusion given strong similarities between the relevant watch designs and evidence of the manufacturers' bad faith, and the sellers established that their trade dress was non-functional. However, the manufacturers' alleged false representations to investigators and posting of the sellers' advertisements on the manufacturers' office walls did not amount to commercial advertising or promotion, so the sellers' Lanham Act false advertising claim failed. The manufacturers' designations of their watches as "Swiss made" or "Geneve" did not establish false designation of origin under the Lanham Act and did not violate N.Y. Gen. Bus. Law §§ 349 or 350. The sellers were entitled to a permanent injunction and an accounting of profits, but punitive damages, attorney's fees, and a "safe distance" order were unwarranted.