Newport to Get Damages Against Counterfeiter

     CLEVELAND (CN) – Lorillard Tobacco, manufacturer of brands like Newport, won an injunction and damages against a convenient store caught selling counterfeit cigarettes by the carton.



     A sales rep from Lorillard discovered two cartons of Newports she suspected were counterfeit while visiting Downtown Check Cashing and My Market. After reporting the fakes to her superiors and the Ohio Department of Transportation, a sting operation netted more than 200 additional packages of counterfeit cigarettes.
     Lorillard field suit for trademark counterfeiting and infringement, unfair competition, and violations of Ohio’s Deceptive Trade Practices Act.
     U.S. District Judge John Adams granted the company’s motion for summary judgment last week, awarding a permanent injunction and damages to be determined following oral arguments.
     The court based its ruling on eight factors that determine whether the counterfeit cigarettes and trademarks were likely to cause confusion to consumers, including “the strength of the plaintiff’s mark; the relatedness of the goods; the similarity of the marks; [and] any evidence of actual confusion.”
     “Importantly, plaintiff’s marks are registered,” Adams wrote. “Additionally, the public readily accepts the marks as belonging to Lorillard. Plaintiff has gone to great lengths to market the Newport brand and as a result has created highly distinctive marks. This factor weighs in the plaintiff’s favor.”
     “The cigarettes had nearly identical marks, were commingled in the same inventory, were offered at identical costs, and targeted the same consumers,” he added. “There can be no doubt that consumers would believe the goods all originated from Lorillard. In fact, defendant has made no argument to the contrary. This factor, therefore, weighs heavily in plaintiff’s favor.”
     “The extensive similarity between the marks on the authentic and counterfeit cigarettes is an additional factor that the court weights in plaintiff’s favor,” Adams concluded.
     Lorillard also documented evidence of actual confusion, such as the employee who suspected the cigarettes were counterfeit but “was unable to say definitively whether the cigarettes were counterfeit before sending them to another individual at Lorillard with specialized knowledge.”
     “Given the similarity between the authentic and counterfeit cigarettes and the confusion experienced by individuals with specialized knowledge, it is more likely that consumers will be confused,” Adams wrote.
     Lorillard seeks damages of $200,000 for each violation of its eight trademarks. A hearing is scheduled for Nov. 7.

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