|Could a Summons Be Hidden Inside?|
Thursday, 7 August 2014
Jeremy knows my fondness for big and expensive jewelry and has kindly alerted me to this recent case where the jewelry house Fabergé successfully claimed that a Brooklyn restaurant had infringed its trade marks and its retail storefront.
Last June, Fabergé Ltd and Fabergé Services Ltd (Plaintiffs) filed a trademark and copyright infringement suit against the owners of the Faberge restaurant, located in Brooklyn, and their company, Good Vision Taste (Defendants). On July 31, the U.S. District Court for the Eastern District of New York issued a consent judgment and permanently enjoined defendants from using the Fabergé (or Faberge) trade mark and from using the Fabergé storefront’s design. The case is Fabergé Ltd. et al.v. Yusufov et al., 1:14-cv-03519.
Fabergé was originally the name of Peter Carl Fabergé, a Russian jeweler who became famous for creating elaborate eggs which became the gift of choice for the Russian imperial family afterAlexander III first commissioned one to offer to his wife as an Easter present in 1885. The eggs, each unique and made using gold, diamonds or other precious materials, opened up to reveal their surprises, such as
a diamond necklace or a diamond replica of the Imperial crown. The Fabergé
company still produces and sells egg pendants and other high-end jewelry. The
Faberge restaurant is a somewhat more
mundane venture which opened in Fall 2013 on Emmons Avenue in Sheepshead Bay, a
part of Brooklyn where many immigrants from the former Soviet Unions have
chosen to live.
The complaint alleged trademark infringement. It also claimed that Fabergé is a famous trademark and that the Defendants were diluting the distinctive quality of the famous mark by such unauthorized use. Plaintiffs own several Fabergé trade marks in the U.S which all predate the use of ‘Faberge’ by the Brooklyn restaurateurs. The restaurant’s name did not have an accent on the final ‘e’, but nevertheless sported a continental flair by replacing the “A” in its name by the Eiffel Tower on the sign adorning its façade. The Yelp page dedicated to the restaurant mistakenly spelled the restaurant’s name with an accent on the final ‘e’.
The complaint also claimed that the restaurant had “menu items that directly and obviously allude to the famous historical legacy of the Plaintiffs.” The menu indeed incorporates a Faberge salad and a St. Peter kebab. It does not, however, seem to take much inspiration from Russia, even if it features a “crazy Napoleon” pastry on the menu and serves caviar in egg-shaped cups (see this video at 3: 26).
Well, the restaurateurs’ use of the Faberge name for their restaurant was indeed a Berezina, as the Eastern District of New York Court permanently enjoined Plaintiffs from using Fabergé, or Faberge, as a trade mark or the name of a restaurant, catering service or bar, or as a keyword for search engine optimization purposes.
It would have been hard to for the owners of the restaurant to deny that they were inspired by the Fabergé company when naming their restaurant as they also used the Fabergé retail storefront as their source of inspiration for their own façade. Fabergé owns a copyright for the storefront design of its London and Kiev retail stores, which consists of a repeating patterns of purple diamonds outlined in gold, which is designed to recall the trellis pattern used on some of the original Fabergé eggs (see p. 5 of the complaint). The Brooklyn restaurant used a similar pattern on its own façade, although the golden outlines are not as ornate. It also used the diamond pattern in its inside décor (see this video at 4:07). The Eastern District of New York Court also permanently enjoined Defendants from displaying, copying or making use of Plaintiff’s storefront design, or “any confusingly similar variation thereof.”
Defendants have thirty days to destroy all materials and documents bearing the Faberge name, to stop using Faberge as the name of their restaurant and to stop incorporating the Fabergé storefront design in their own storefront.