Victorinox AG v. B & F System, Inc.

114 F. Supp. 3d 132
CourtDistrict Court, S.D. New York
DecidedJune 22, 2015
StatusPublished
Cited by8 cases

This text of 114 F. Supp. 3d 132 (Victorinox AG v. B & F System, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Victorinox AG v. B & F System, Inc., 114 F. Supp. 3d 132 (S.D.N.Y. 2015).

Opinion

MEMORANDUM

JÉD S. RÁKOFF, District Judge.

. Plaintiffs Victorinox AG, Victorinox Swiss Army, Inc., and Wenger NA, Inc., makers of the iconie Swiss Army Knife, bring this suit against defendants B & F System, Inc. and John D. Meyer, asserting various state and federal trademark claims. Plaintiffs moved for summary [135]*135judgment on Count I (trademark infringement and counterfeiting under 15 U.S.C. § 1114), Count III (false designation of origin and unfair competition under 15 U.S.C. § 1125(a)), and Counts V and VI, (trademark infringement and unfair competition under New York common law) of their complaint. Defendants cross-moved for summary judgment dismissing -the complaint and. granting their counterclaims. The Court issued a “bottom line”. Order granting plaintiffs’ motion and denying defendants’ motion. This Memorandum sets forth the reasons for those rulings.

“Summary judgment is appropriate only if the moving party, shows that there are no genuine issues of material fact and that the moving party is entitled to judgment as a matter of law.” Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, 300 (2d Cir.2003). Where the parties cross-move for summary judgment, the Court analyzes each motion separately, “in each case construing the evidence in the light most favorable to the non-moving party.” Novella v. Westchester Cnty., 661 F.3d 128, 139 (2d Cir.2011).

The following facts are undisputed unless otherwise noted.1 Plaintiffs’ Swiss Army Knife, which was first offered for sale in 1897, features, inter alia, two red elongated oval-shaped plastic scales (ie., handles), ■ a light-colored cross-and-shield device on one of the red scales, multiple silver metal implements that fold into-the knife, and notches .for tweezers (identified by , the color gray) and for a toothpick (identified by a tan color) at one end of the knife.. Collectively,, these features ,comprise the “Swiss Army Trade Dress.” See Plaintiffs’- .Local Rule 56.1 Statement of Undisputed Facts dated Dec. 2, 2013 (“PI. Rule 56.1”) ¶¶1-2, 56. One element of this Trade Dress,.namely the two elongated oval-shaped red. scales with curved edges, is' protected by, U.S. Trademark Registration. No. 3,546,920 (the “Red Mark”).., Id ¶ 3, 53.

Defendants, for their part, sell multifunction pocket 'knives under the name “Royal ■ Crest.” See Defendants’ Local Rule 56.1 Statement of Undisputed Facts dated Dec. 2, 2013 (“Def. Rule 56.1”) ¶20. Defendants’ knives also contain silver metal tools sandwiched between two elongated oval-shaped red scales with curved edges. PI. Rule 56.1 ¶¶54„. The accused knives bear a device that plaintiffs describe as a white cross and shield, and defendants describe as a silver .shield with an “X” and a crown. Id. ,¶55; Defendants’ Responses to PI. Rule 56.1 ¶55.

The Court first considers defendants’ motion for summary judgment.- Defendants’ primary contention is that plaintiffs’ claims are barred by the doctrine of laches, an equitable defense that applies where a plaintiff fails to bring suit in a timely manner. In response, plaintiffs seek summary judgment that none of their claims is barred by laches.2 Laches is established by demonstrating that the “plaintiff had knowledge of defendant’s use [136]*136of its marks, that plaintiff 'inexcusably delayed in taking action with respect thereto, and that defendant will be prejudiced by permitting plaintiff inequitably to assert its fights at this time.” Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1040 (2d Cir.1980). Proof of actual knowledge of the alleged infringing use is not necessary. Rather, plaintiffs aré charged “with such knowledge as [they] might have obtained upon inquiry, provided the facts already known by [them] were such as to put upon a man of ordinary intelligence the duty of inquiry.” Polaroid Corp. v. Polarad Elecs. Corp., 182 F.Supp. 350, 355 (E.D.N.Y.1960), aff'd, 287 F.2d 492 (1961).

Defendants concede that plaintiffs did not actually know about the accused products until a shipment was detained by U.S.' Customs agents in Dallas in March 2013, see Complaint dated June 28, 2013 (“Compl.”) ¶¶2, 33. They argue instead that plaintiffs should have known about the alleged infringing use years, even decades, earlier. Defendants contend that they have been producing the accused knives since 1983 (branded as Royal Crown since 1987), that they openly advertise -their products through catalogs, the internet, and trade shows, and that they have sold some 2,500,000 units over the past thirty years through various major retail outlets. They contend that plaintiffs could have discovered the alleged infringing use had they policed their mark effectively.

However, defendants fail to clear the critical threshold hurdle applicable to any party asserting an equitable defense— ■clean hands. Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814, 65 S.Ct. 993, 89 L.Ed. 1381 (1945). In the trademark context, it is well established that “laches is not a defense against injunctive relief when the defendant intended the infringement.” Harlequin Enters. Ltd. v. Gulf & W. Corp., 644 F.2d 946, 950 (2d Cir.1981). In other words, a laches defense is not available to a defendant who “intentionally traded off the [plaintiffs] name and protected products.” Hermes Int’l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 107 (2d Cir.2000); see also Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir.1999) (“[D]efendant’s intention to confuse undermines any claim of good faith.”).

Even viewing the evidence in the light most favorable to defendants, the conclusion that- defendants intentionally infringed plaintiffs’ trademark and trade dress is inescapable. The similarity between the accused knives and plaintiffs’ Swiss Army Knives is both striking and telling.3 The accused knife copies the Swiss Army Knife elément-for-element, from the oblong shape, to the identical’ placement of the toothpick and tweezer notches, to the distinctive red hue. Like the Swiss Army Knife, moreover, at least some models of defendants’ knives come packaged’ in a rectangular silver-gray box. See Declaration of H. Straat Tenney dated Dec. 3, 2013 (“Tenney Deck”) Exs. 61, 63.

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Bluebook (online)
114 F. Supp. 3d 132, Counsel Stack Legal Research, https://law.counselstack.com/opinion/victorinox-ag-v-b-f-system-inc-nysd-2015.