LOS ANGELES – A federal judge has rejected Arcona’s counterfeit claim regarding its Eye Dew eye cream.
Judge Otis Wright II of the U.S. District Court for the Central District of California issued an opinion March 19 granting defendant Farmacy Beauty’s motion for partial summary judgment. He noted he considered papers filed in connection with the motion and issued a decision without hearing oral arguments.
Plaintiff Arcona Inc., which has a studio in Beverly Hills, introduced Eye Dew cream on Jan. 1, 2002, and filed for trademark registration on April 18, 2012. In its lawsuit, Arcona sued New York-based Farmacy Beauty LLC, officer David Chung and founder March Veeder, alleging the company violated its trademark when it sold its own brand of Eye Dew cream from 2015 to 2017.
According to Wright, Farmacy Beauty stopped selling its Eye Dew in September 2017, the same month Arcona filed its complaint. Arcona amended the complaint the following April, and moved for partial summary judgment on only the counterfeiting claim. Wright’s opinion included images of Arcona’s Eye Dew and Eye Dew Plus, both the outer packaging and product container, as well as a similar image of Farmacy Beauty’s Eye Dew.
Wright said the parties don’t dispute the material facts, but do disagree on the Lanham Act definition of counterfeit.
“A counterfeit is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark,” Wright wrote, quoting the law, saying courts view trademark counterfeiting as infringement in which a company tries to deceive customers into thinking they are buying the original product.
Farmacy Beauty argued the court should only consider the fact it used the term Eye Dew and not the entire product. Wright noted Arcona acknowledged its trademark designation doesn’t reference font, style, size and color of text, and took issue with its counterfeit claim focusing exclusively on typeface and font.
“For (Arcona) to now claim that the font, style, and color of the ‘Eye Dew’ phrase are the bases for its counterfeit claim is disingenuous and contrary to its trademark registration,” Wright wrote.
He further said that in some cases, small differences in labels aren’t enough to defeat a counterfeiting claim. Wright cited the 2015 Southern District of New York opinion in Tiffany & Co. v. Costco Wholesale Corp., in which the court granted summary judgment in favor of the Tiffany because the only difference between rings the two companies sold was a small generic mark in the inside of the Costco ring.
“Without determining the specific level of similarity between the Eye Dew products,” Wright concluded, “no reasonable jury could find that (Farmacy Beauty’s) Eye Dew product is a counterfeit of the plaintiff's Eye Dew products.”
Wright further said the packaging of the two products is neither identical nor indistinguishable. Arcona’s Eye Dew packages are tall and cylindrical, while Farmacy Beauty’s cream package is short and wide. Each product bears its manufacturer’s name, and the Farmacy Beauty Eye Dew label calls it a “total eye cream with Echinacea greenenvy,” a claim not made on the Arcona cream.
After ultimately deciding it implausible a consumer would believe the Farmacy Beauty product is sold by Arcona, Wright granted Farmacy Beauty’s motion for summary judgment, ending Arcona’s counterfeiting claim.