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Actionable Trademark Infringement

By Robert N. Potter and W. Andrew Pequignot
August 27, 2009

The U.S. Court of Appeals for the Second Circuit has held that the sale of products lacking a unique serial number applied by a brand owner for anticounterfeiting and quality control purposes constitutes trademark infringement under federal law. This is so even if the removal of the code does not cause physical damage to an otherwise genuine product and consumers are not aware that the code has been removed.

In Zino Davidoff SA v. CVS Corp., 2009 WL 1862462, No. 07-2872-CV (2d Cir. June 19, 2009), the Second Circuit affirmed the district court's entry of a preliminary injunction against CVS Corp., barring defendant's sale of DAVIDOFF COOL WATER fragrances that lack the unique production code applied at the time of manufacture to the bottle and box of genuine fragrances. Zino Davidoff uses the code both to identify counterfeits and to control the quality of genuine fragrances. The Second Circuit agreed that the products from which the code had been removed were no longer subject to the brand owner's quality assurances, were materially different from genuine products, and thus the sale of these goods constitutes trademark infringement.

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