Wenger S.A. v. OLIVET INTERNATIONAL INC.

Background

Wenger and Olivet own similar trademarks used on luggage. Wenger’s word mark is “SwissGear” and Olivet’s is “SwissTech,” with each using a different logo. Wenger sued Olivet for copyright infringement, common-law unfair competition, and several types of trademark infringement. Olivet moved for partial summary judgment—a request for judgment without a trial on claims where there is no genuine dispute of material fact—on Wenger’s counterfeiting claim under 15 U.S.C. § 1114 and dilution claim under 15 U.S.C. § 1125.

Counterfeiting claim

The court denied Olivet’s motion as to the counterfeiting claim. A counterfeit mark is identical or substantially indistinguishable from a registered mark. The logos were not identical, so the question was whether they were nearly identical despite only minor differences. The court said that this fact-sensitive comparison ordinarily belongs to a jury.

Although Olivet argued that its logo did not appear without the word “SwissTech,” the court found that a reasonable jury could conclude that consumers would notice the logo on the front of a suitcase separately from the word appearing elsewhere on the product. Viewing the marks as they appeared on actual merchandise, from the perspective of an average purchaser, and in the light most favorable to Wenger, the court held that Olivet had not shown that no reasonable jury could find the marks substantially indistinguishable.

The court noted that Wenger would also need to prove a likelihood of confusion at trial. It explained that Olivet could argue that the appearance of “SwissTech” on the luggage dispels confusion, that the parties’ products and marks have relevant similarities, and that the marks share an unprotectable inspiration in the Swiss flag. The court did not decide those issues in this motion.

Dilution claim

The court granted Olivet’s motion as to the dilution claim. Under federal law, a mark must be famous—widely recognized by the general consuming public in the United States as identifying its owner’s goods or services—to receive anti-dilution protection.

The court held that Wenger’s mark was not famous. Wenger tried to connect its fame to the reputation of Swiss Army knives, but the court found that the record did not establish that consumers associated Wenger’s mark with those knives. Wenger had assigned the rights to “Swiss Army” to its parent company, Victorinox, ten years earlier, and Wenger’s evidence included only limited continued use of its logo on Swiss Army knives, labels, website material, and related marketing. The court found no surveys, news reports, or other evidence showing recognition by the general consuming public.

Wenger also cited about $100 million in annual United States sales, $3 million in annual advertising, and fifty years of use. The court found those figures insufficient without stronger evidence of actual public recognition. It further found that the existence of many similar Swiss-related marks used for luggage supported the conclusion that Wenger’s mark was not dominant enough to be famous.

Fees and costs

The court denied both Wenger’s and Olivet’s requests for attorney fees and costs associated with the motion. It found that the case was not exceptional at that stage under the standard governing fee awards. The court stated that the party prevailing at trial could later file a motion for fees and costs if it believed the applicable standard was met.

Disposition

Olivet’s motion for partial summary judgment was denied with respect to Wenger’s counterfeiting claim and granted as to the dilution claim. Both sides’ requests for fees and costs were denied. The court directed the parties to submit potential trial dates for the remaining claims in March, April, and May 2024.