Alor ordered to stop selling Charriol-like jewelry
April 15, 2014
San Diego--A federal judge has issued a preliminary injunction barring Alor from selling jewelry that allegedly infringes upon Charriol’s cable trademarks and from publicly claiming that Charriol is being “rebranded” as Alor.
According to court documents filed Thursday in federal court in California, San Diego-based A’lor International Ltd. cannot manufacture, sell or advertise jewelry that contains or infringes upon Philippe Charriol International’s (PCI) trademarks--including pieces with the cable or metallic nautical rope design--covered under the jewelry agreement the two companies inked in October 2010.
In addition, Alor cannot use, display or reproduce PCI’s trademarks in Alor-brand products and the company is barred from “promoting or holding itself … out to members of the public as a replacement or successor to PCI or the Charriol brand; suggesting that PCI or Charriol have ‘merged with’ or been ‘re-branded’ as Alor; (and) distributing Charriol jewelry under the ‘Alor’ name, or under any trade name other than Charriol,” court papers state.
“While Alor has been promoting that cable jewelry is returning to its ‘Alor roots,’ cable jewelry was and is associated with the company that made it famous and an international brand, Charriol,” Geneva-based Charriol said in a statement issued Monday. “As the federal court has ruled, cable jewelry is and remains the province of Charriol … While Alor contends that it has separated from Charriol, look for Charriol cable jewelry and products at dealers everywhere.”
Before the preliminary injunction goes into effect, the court has requested that Charriol post a bond. Charriol said it is contesting bond in the case.
Alor said it is still working to determine if it will appeal the injunction.
When asked specifically what jewelry the ruling applies to, both sides said that is still being determined.
Tal Zemer, Alor’s principal and general counsel, said neither the court nor PCI has defined specific SKUs covered by the ruling. He said they are working with PCI to clarify what pieces are involved.
Zemer also said they do not believe the ruling will impact the new in-store advertising materials.
“The judge’s order affects only a portion of our products and it’s still only a preliminary ruling,” he said. “We fully expect to prevail at a full trial on the merits when the judge is able to consider all of the relevant evidence as to our contractual relationship (with PCI).”
National Jeweler first reported on the legal battle between Charriol and Alor in February after Alor issued a press release announcing it would no longer be selling jewelry under the Charriol name in the U.S., Canada and the Caribbean and would instead revert to selling as “Alor.” Alor had been distributing Charriol jewelry in the United States since 1992.
Alor shot a new advertising campaign featuring model Noot Seear and began providing its U.S. and Canadian retailers with Alor-branded jewelry as well as packaging, support materials and displays.
But Charriol is fighting this so-called rebranding, accusing Alor in court documents of, among other things, terminating their distribution agreement without proper justification then launching an infringing line of Alor-brand jewelry.
In one of its many arguments in this complicated case, Alor, however, contends that Charriol has no protectible interest in the cable design mark because it is generic, meaning it is widely used by jewelry designers.
A similar battle currently rages in the jewelry world between Tiffany & Co. and warehouse retailer Costco, with Costco claiming the term “Tiffany setting” has become genericized.
In issuing the preliminary injunction, the court denied two other requests from PCI.
It deferred ruling on the jewelry agreement between the two parties--which Alor claims it ended via letter in February but which PCI contends was not properly terminated--and it shot down PCI’s request for a preliminary injunction requiring Alor to obtain PCI’s approval for any new products it makes or sells.