In a January 6, 2014 ruling, Judge Harold Baer, Jr. entered
judgment in favor of the plaintiffs after a four-day bench trial on the
plaintiffs’ trademark and trade dress infringement claim over plaintiff Audemars
Piguet Holding S.A.’s well-known octagonal watch design. The plaintiffs contended that two models of
the defendants’ watches infringed their trademarks and trade dress in their “Red
Oak” line of watches. In finding in favor
of the plaintiffs, Judge Baer found that “the similarities between these
watches remain striking.”
In considering the trade dress claim, the Court wrote that a
“plaintiff asserting product design trade dress infringement must prove
distinctiveness by showing that ‘“in the minds of the public, the primary
significance of [the mark] is to identify the source of the product rather than
the product itself” (what is known as ‘acquired distinctiveness’ or ‘secondary
meaning’).’” Judge Baer added that to “determine
whether a secondary meaning has attached, the court considers six factors: ‘(1) advertising expenditures, (2) consumer
studies linking the mark to a source, (3) unsolicited media coverage of the
product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length
and exclusivity of the mark’s use.’” The
Court considered each factor in turn, and found that all but one of them
favored the plaintiffs.
Having found that the plaintiffs’ trade dress has secondary
meaning, the Court conducted a similar analysis to determine whether there was
a likelihood of confusion between the plaintiffs’ and the defendants’ watches,
using the well-known eight factor Polaroid
test. Finding that four of the factors
favored the plaintiffs, the Court concluded that the defendants’ “use of the
allegedly infringing designs is likely to cause customer confusion.”
Lastly with regard to infringement, Judge Baer considered
the defendants’ contention that the plaintiffs’ trade dress was functional “because
an octagon is one of only a limited number of shapes available for a watch.” The Court rejected that argument, finding
that “the trademark here does not protect that octagon shape standing alone;
rather the combination of that shape with
the eight screws spaced around the bezel is protected.” The Court also found that the plaintiffs’
trade dress is not “aesthetically functional” (where giving the markholder
exclusive rights to the design “would put competitors at a significant non-reputation-related
disadvantage”), because “there is no support for the idea that protecting this
mark will hinder competition,” especially since 98% of the defendants’ “sales are
of watches that do not bear the marks at issue.”
