Bulgari sues online stores for selling 'counterfeit Bvlgari products'
2023 IPDBRF 0021
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By Patrick H.J. Hughes
WESTLAW Intellectual Property Daily Briefing
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February 10, 2023
(February 10, 2023) - High-end jewelry and watch maker Bulgari SpA is suing numerous as-yet unidentified online merchants in Chicago federal court to protect not only its reputation, but also unknowing customers from accidentally buying "counterfeit Bvlgari products."
Bulgari SpA v. Partnerships and Unincorporated Associations Identified on Schedule "A," No. 23-cv-804, complaint filed (N.D. Ill. Feb. 9, 2023).
The company, which has federally registered dozens of trademarks incorporating its Bvlgari logo, filed its trademark claims Feb. 9 in the U.S. District Court for the Northern District of Illinois. It provided a list of partnerships and unincorporated associations as defendants, a list the court has sealed.
Bulgari says it is virtually impossible to know the identities behind those partnerships and associations because they operate under "seller aliases," but it also says it believes most are from China "or other foreign jurisdictions with lax trademark enforcement systems."
To evade efforts to restrain their illegal operations, the defendants refrain from using "Bvlgari" marks in the names of the counterfeit items listed on e-commerce websites, the suit says. Yet they still use unauthorized "Bvlgari" marks in advertisements and online text to attract search engines that in turn attract potential consumers searching for legitimate Bvlgari products.
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The company replaces the "u" in its name with the letter "v" for its logo to reflect how the name would be spelled with Roman letters, a tribute to its origins in the Italian capital.
The complaint provides a short history of the luxury jewelry design house, which Sotirio Bulgari and his sons started with their first store in 1905 on the Via Condotti, the famous Roman shopping street. Bulgari has become one of the world's most famous jewelers and "Bvlgari" one the world's most recognized brands, the suit explains.
In the U.S., the company has registered "Bvlgari" marks for a slew of jewelry lines, including earrings, bracelets and watches, but also for accessories and products such as toilet soap, eyeglasses, key rings, perfume and precious metals.
It also holds trademark rights for the spelling of "Bulgari," a word that is incorporated in us.bulgari.com, the domain name that resolves to the company's official website.
The suit says the defendants sell counterfeit merchandise at e-commerce stores that "look sophisticated" and are difficult to distinguish from the company's official online presence.
Furthermore, the defendants appear to be working together, as their online stores offer similar payment methods and prices, and their sites contain the same incorrect grammar and misspellings.
Based on their unauthorized use of Bulgari's marks in commerce, the defendants are liable for trademark infringement and false designation of origin pursuant to Sections 32 and 43 of the Lanham Act, 15 U.S.C.A. §§ 1114 and 1125, the suit says.
It calls for an injunction to halt the unauthorized use of "Bvlgari" marks and sale of counterfeit merchandise, as well as to stop the defendants from continuing to cause consumer confusion. The injunction should apply to online marketplace platforms such as Amazon, eBay and Etsy because they do not adequately verify the identities of those using their services to sell counterfeits, the complaint says.
The company seeks a disgorgement of profits or maximum statutory damages, which Section 35(c)(2) of the Lanham Act, 15 U.S.C.A. § 1117(c)(2), sets at $2 million for each use of a counterfeit trademark. It also seeks attorney fees and costs.