## Facts

- Cartier entities owned registered CARTIER trademarks used on luxury watches, jewelry, and related accessories.
- Ben-Menachem and related defendants were alleged to have imported, distributed, and sold watches and related goods bearing CARTIER marks without authorization.
- Cartier alleged the marks used on defendants’ goods were identical or substantially indistinguishable from Cartier’s registered marks and constituted counterfeit use.
- Cartier sued under the Lanham Act for infringement and counterfeiting (15 U.S.C. § 1114) and false designation/unfair competition (15 U.S.C. § 1125(a)), plus parallel New York common-law and statutory unfair competition claims.
- Cartier moved for summary judgment seeking a finding of liability and permanent injunctive and monetary relief.

## Issues

1. Whether defendants’ commercial sale of goods bearing marks identical or substantially indistinguishable from CARTIER marks established Lanham Act infringement and counterfeiting as a matter of law.
2. Whether, in a counterfeiting case, the court must conduct an in-depth multi-factor likelihood-of-confusion analysis.
3. Whether the same conduct supporting federal infringement/counterfeiting also establishes New York common-law trademark infringement and unfair competition and New York statutory unfair competition.
4. Whether the record supported permanent injunctive relief and monetary relief associated with willful counterfeiting.

## Decision

- The court granted summary judgment for Cartier on Lanham Act trademark infringement and counterfeiting liability.
- The court held that an in-depth likelihood-of-confusion analysis was unnecessary because counterfeit marks are inherently confusing.
- The court entered judgment for Cartier on the parallel New York common-law and statutory unfair competition claims based on the same conduct.
- The court granted permanent injunctive relief barring further use of the CARTIER marks and further dealing in counterfeit Cartier goods.
- The court awarded monetary relief consistent with a willfulness finding in a counterfeiting operation.

## Legal Principles

- Federal trademark registrations are prima facie evidence of validity, ownership, and the registrant’s exclusive right to use the marks.  
- Use of a mark identical or substantially indistinguishable from a registered mark on the same type of goods, without authorization, supports liability for trademark counterfeiting under the Lanham Act.
- In counterfeiting cases, courts may treat consumer confusion as established as a matter of law because counterfeit marks are inherently confusing, without a detailed multi-factor confusion analysis.
- When state-law trademark infringement and unfair competition claims rest on the same acts as Lanham Act counterfeiting and unfair competition, the same conduct generally establishes liability under both federal and New York law.
- Evidence of deliberate copying and commercial trafficking in counterfeit goods supports findings used to justify permanent injunctive relief and enhanced monetary remedies.

## Conclusion

The court held defendants liable on summary judgment for Lanham Act counterfeiting and infringement based on unauthorized sales of goods bearing marks indistinguishable from Cartier’s registrations, treated confusion as established in a counterfeiting case, and granted parallel New York law relief along with a permanent injunction and monetary remedies tied to willful counterfeiting.


Cartier Int'l B.V. v. Ben-Menachem, No. 06 Civ. 3917, 2008 WL 64005 (S.D.N.Y. Jan. 3, 2008)