TAMPA, Fla. (CN) - Without admitting wrongdoing, Martha Stewart and Emeril Lagasse have agreed to stop selling purported Solingen knives on the Home Shopping Network.
A Chamber of Commerce for the German city of Solingen says the trade name dates back to 1853 and is protected in Germany and the United States. It was purportedly trademarked in the United States in 1974, with a first-use date of 1853.
The certification mark Solingen belongs to the German trade association, the Chamber of Industry and Commerce Wuppertal-Solingen-Remschied.
Products displaying the Solingen certification mark must be produced in Solingen, Germany, and meet specific requirements set forth in German law under the "Solingen Decree."
Stewart and Lagasse raised questions with their sale on the Home Shopping Network, as well as online, of China-made knives marked "Solingen."
The German trade association filed suit in September 2012, alleging counterfeiting, trademark infringement, unfair competition and false advertising under Federal law and unfair competition under Florida law.
Stewart and her associate companies counterclaimed to invalidate the certification mark.
The case was transferred to Tampa where the parties entered a settlement and agreed to a permanent injunction against the defendants.
U.S. District Judge Mary Scriven issued the order on Jan. 28, prohibiting Stewart, Lagasse, and their respective companies; the Home Shopping Network; and SED International Holdings Inc. from using the "Solingen" certification mark on knives they were selling to unknowing consumers on television.
Stewart and her companies have admitted that the trademark is valid and enforceable and agreed to pay the German trade association an undisclosed amount, according to the order.
The defendants nevertheless still deny wrongdoing.
"If the court finds that any of the defendants have violated or breached this permanent injunction, the court will impose such sanctions as it deems appropriate under the circumstances, and as permitted by law," Scriven wrote. "The terms of this permanent injunction shall govern and bind the activities of defendants, their agents, servants, employees, and all persons in active concert or participation with them."
Scriven barred the defendants from using the trademark or falsely stating that the products are associated with Solingen without written authorization from the German chamber.
"This is a huge victory for our client," attorney Catherine Hoffman, who represents the chamber, said in a statement. "Our client's certification mark identifies only the highest quality products made in Solingen, Germany, and we will do whatever it takes to protect that reputation, which includes Solingen's world-famous reputation as the 'Cutlery Capital.' We hope this settlement sends a strong message to anyone attempting to profit from improperly certifying products with the SOLINGEN mark."
Martha Stewart Living Omnimedia Inc. (MSLO), Stewart's company, owns Lagasse's product line, which sell on the Home Shopping Network.
Stewart bought the Emeril brand from the eponymous celebrity chef for $50 million and now controls the brand, the chamber says. It described defendants' Home Shopping Network as a $3 billion enterprise, which "advertises, distributes, promotes, offers, for sale and sells various knife products bearing counterfeits of the chamber's federally registered certification mark, in this judicial district and elsewhere through (its) Internet website."
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