A. Bourjois & Co., Inc. v. Katzel
Headline: Court upholds injunction blocking seller from importing and selling genuine French cosmetics in original marked boxes, protecting the U.S. buyer’s trademark and goodwill and preventing confusingly similar packaging.
Holding: The Court held that a U.S. buyer who purchased the French maker’s American business and registered its marks may stop another seller from importing and selling the same goods in labels and boxes that infringe the buyer’s U.S. trademark rights.
- Stops sellers importing genuine foreign goods using similar packaging to bypass U.S. trademark rights.
- Protects buyers who purchase U.S. business and goodwill from confusing competition.
- Allows injunctions under the Trade Mark Act to prevent misleading sales.
Summary
Background
A U.S. company bought the American business, goodwill, and registered trademarks for two French face powders. The buyer continued importing the powder, used similar boxes and labels, and spent money advertising so U.S. consumers associated the marks with that buyer.
A competing seller bought the same powder in France and sold it in closely similar French boxes here. The defendant’s packages lacked the buyer’s U.S. ownership notice and labeled the product “Poudre de Riz de Java,” while the buyer sold it as “Poudre Java.” The District Court issued a preliminary injunction against the defendant, the Court of Appeals reversed, and the Supreme Court took the case.
Reasoning
The key question was whether importing genuine goods in their original foreign packaging lets a seller avoid U.S. trademark rights owned by someone else. The Court answered no. After the trademark and goodwill were sold for use in the United States, the French makers could not enter the U.S. market and use the old marks to compete with the buyer. Ownership of the physical goods does not give the right to sell them under a mark that belongs to another in the United States. The Court treated trademark protection as a strong monopoly and held the injunction proper under sections 17 and 19 of the Trade Mark Act.
Real world impact
The decision allows a U.S. buyer who purchases a foreign maker’s American business to stop others from importing and selling the same genuine products in packaging that misleads U.S. consumers about who is selling them. Importers cannot evade U.S. trademark ownership simply by bringing goods in original foreign boxes.
Dissents or concurrances
The Court of Appeals had reversed the injunction with one judge dissenting; the Supreme Court reversed the appeals court and restored the injunction.
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