MIAMI, Fla. — Heller Waldman’s litigation team, led by Glen Waldman and Michael Sayre, has successfully defended their client, Invicta Watch Company of America, against claims of trademark infringement and unfair competition resulting from its purchase of the vaunted TechnoMarine brand and use of its logo on eyewear.
The case stems from an agreement that the plaintiff, Casa Dimitri Corporation of Miami, entered into with TechnoMarine some years ago to develop eyewear bearing the trademark that TechnoMarine had used on its luxury watches. Through that agreement, Casa Dimitri was given access to use of the trademarked logo. When Invicta purchased TechnoMarine’s brand during Swiss bankruptcy proceedings, the watch company acquired the trademark that Casa Dimitri felt it had exclusive rights to continue to use.
Initially, Heller Waldman was successful, after a 3-day evidentiary hearing, in fighting off Casa Dimitri’s motion for preliminary injunction to prohibit Invicta from policing and controlling its acquired trademark based on a finding that Casa Dimitri failed to demonstrate that it had owned the rights to the trademark. Dimitri eventually amended its complaint to add claims for copyright and patent infringement in addition to the trademark and unfair competition claim.
Subsequently, in response to the Amended Complaint, Federal Judge K. Michael Moore dismissed all of Dimitri’s claims. The Court accepted each of Heller Waldman’s dismissal arguments. Specifically, the Court held that the trademark claims were dismissed with prejudice based on comity (with respect to the foreign bankruptcy proceeding) and standing grounds. The Court also dismissed the copyright claims for failure to allege registration and the patent claims for failure to sufficiently identify the purported infringement.
This litigation was crucial to the continued success of Invicta. If Dimitri had been successful, Invicta would have been precluded from engaging in any eyewear sales under its newly purchased brand. This would have had a significant adverse effect on Invicta’s business.
Currently, Heller Waldman has filed a counterclaim to enforce the trademark rights with an expectation that a hearing to enter an injunction to prevent any further use by Dimitri will be forthcoming.
“We are pleased that the court carefully weighed the facts of this case to determine the lack of merit for the relief that Casa Dimitri sought,” Glen Waldman said. “Invicta’s purchase of the TechnoMarine brand clearly included its trademark, which the plaintiff had no legal right to.”