Have you decided to create rings with the classic diamond on top and, to hold the stone in place, have you opted for six thin prongs? In this way, instead of using the traditional four prongs, with six you will have a thinner metal, which enhances the diamond of the ring. It is the so-called Tiffany Setting, a brand patented by the American Maison. And you can also use it, as long as you don’t call it Tiffany Setting, if you don’t want to end up in court. Yet it happened, and it is a case that has been dragging on for eight years now. Here are the facts.
In 2013, Tiffany & Co. sued Costco Wholesale, a large distribution company, for trademark infringement, counterfeiting and unfair commercial practices. Costco, in fact, sold rings defined as Tiffany setting, which however were not produced by the iconic Fifth Avenue Maison. A dispute has started. Costco argued that the term Tiffany setting has now become generic and can be used to describe a ring with six thin prongs holding a single stone. But in 2015 an American federal judge ruled in favor of Tiffany in the course of an abbreviated case and, therefore, with a summary investigation.
Result: Costco was ordered to pay Tiffany $ 5.5 million for illegal profits ($ 3.7 million in direct profits and $ 1.8 million for additional benefits from ring sales) and $ 8.25 million dollars in punitive damages. The judge then tripled the 3.7 million, bringing it to 11 million. In total, Costco was supposed to pay Tiffany $ 21 million. But the story isn’t over.
In August 2020, the Court of Appeal ruled on the appeal against the Costco ruling. And he partially overturned the verdict. According to the judges, if a jury had heard the case, they would have guessed that Costco’s use of the word Tiffany could not have confused customers or make them think the rings were from the House. In short, describing a ring as a jewel that uses a Tiffany setting, seems to mean the court, would be like using the word taxi (which, according to some, originates from the name of the noble German family Thurn und Taxis, which in 1490 had introduced the rental service). But the story continues: now a jury will have to decide on the economic aspect of the dispute. In the meantime, it is best to avoid describing the rings as Tiffany setting.
