## Facts

- Davidoff & Cie, S.A. manufactured DAVIDOFF COOL WATER fragrances and owned the U.S. trademark; Lancaster Group US LLC was the exclusive U.S. distributor.
- PLD International Corp. obtained genuine DAVIDOFF COOL WATER products intended for foreign or duty-free markets and resold them in the United States outside authorized channels.
- The products PLD sold had altered identifiers:
  - Box codes were covered with white stickers.
  - Bottle batch codes were removed by etching the glass, leaving a visible mark near the base of the bottle.
- PLD removed batch codes to prevent Davidoff from tracing the supply source and stopping sales to vendors who supplied PLD.
- Davidoff alleged the alterations created material differences affecting consumer expectations about product integrity and Davidoff’s quality-control and recall tracking.
- The district court granted a preliminary injunction under the Lanham Act; PLD appealed.

## Issues

1. When, if ever, does the unauthorized resale of a genuine trademarked product constitute trademark infringement despite the first-sale doctrine?
2. Whether removal of batch codes and visible etching on fragrance bottles constitutes a material difference likely to cause consumer confusion sufficient to support a preliminary injunction under the Lanham Act.

## Decision

- The Eleventh Circuit affirmed the preliminary injunction.
- The court adopted the rule that unauthorized resale of materially different goods can infringe even if the goods are otherwise genuine.
- The court agreed that obliterated batch codes and visible etching were material differences that could affect purchasing decisions and create likely consumer confusion about quality and integrity.
- The district court did not abuse its discretion in concluding Davidoff showed likelihood of success and that injunctive relief was warranted to prevent confusion and harm to trademark goodwill.

## Legal Principles

- An authorized first sale generally exhausts the trademark owner’s control over downstream resales; unauthorized resale of genuine goods ordinarily is not infringement.
- An exception applies where the reseller markets goods that are materially different from those sold through authorized channels; material differences support a likelihood of consumer confusion.
- A difference is material if it is likely to influence consumer purchasing decisions; it may be subtle and may include interference with quality-control measures associated with the mark.
- Visible product defacement and removal of traceability features can be material because they can cause consumers to question authenticity, condition, or whether the goods carry the trademark owner’s usual quality assurances.

## Conclusion

The Eleventh Circuit held that gray-market resale of genuine fragrance products with removed batch codes and visible etched marks could infringe because the alterations were material and likely to confuse consumers, justifying preliminary injunctive relief under the Lanham Act.


Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d 1297 (11th Cir. 2001)