The Refrigiwear, Inc. (“Refrigiwear”) complaint asserts trademark counterfeiting, trademark infringement, and unfair competition under state and federal law and copyright infringement against Sixty International S.A., Sixty Group SPA, and Sixty SPA (collectively “Sixty”) relating to Refrigiwear’s trademarks used on the insulated clothing, accessories, and protective equipment it manufactures.
Refrigiwear has used its REFRIGIWEAR Marks in commence in connection with clothing and other goods since 1954. The complaint depicts the following designs and the dates of first use by Refrigiwear.
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The complaint puts the following registrations in issue: 0633681, 0869036, 3150046, 3221504, and 3221505. Registrations 0633681 and 3221505 are for the word REFRIGIWEAR and the others are for the designs depicted above. In addition, Refrigiwear obtained copyright registrations on the image depicted as Trademark Registration 0869036 (“Reggie” – Certificate of Registration No. VA0001753512) and on the image depicted as Trademark Registration 3150046 (“Reggie II” – Certificate of Registration No. VA0001763069). The marks are collectively referred to as the “Refrigiwear Marks.”
In October 2004, Refrigiwear sold certain international rights to the Refrigiwear Marks to Cruz SRI, plus several registrations it had obtained in Europe (collectively the “European Refrigiwear Marks”). The geographical areas were limited to Europe, Japan, and Russia. According to the complaint, it appears Refrigiwear is not challenging that Sixty has obtained ownership or a license with regard to European Refrigiwear Marks.
The complaint targets two websites known as “sixty.net” and “refrigiwear.it” on which it alleges goods bearing Refrigiwear Marks are offered for sale and sold to customers in the United States. A visit to the sixty.net site directs you to refrigiwear.it (when you click on the Refrigiwear logo). When you seek to place an order on the refrigiwear.it site, you are directed to the page appearing below:
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This page appears to limit shipments to certain countries, presumably those covered by the October 2004 agreement. This is a current snapshot of the page and may, therefore, not represent the website as it appeared at the time the complaint was filed. The complaint alleges in paragraph 30 that the website offered to ship Refrigiwear goods to the United States, Canada, or India.
Prior to filing the complaint, Refrigiwear alleges that it made demand on Sixty to cease distributing products with the Refrigiwear Marks in the United States on October 26, 2010, and again on January 21, 2011, and again to a purchaser of Sixty on October 16, 2012. The complaint alleges that in July 2013 Sixty’s web site advertised that products bearing the Refrigiwear Marks would be shipped to the United States and Refrigiwear purchased such a product which it received in the United States on July 31, 2013.
The complaint seeks a preliminary and permanent injunction, a report on compliance, an accounting of profits, a judgment for actual damages or profits or, alternatively, statutory damages, funds for corrective advertising, and expenses and attorney fees. Count III also seeks a trebling of profits or damages based on the nature of Sixty’s violation of 15 U.S.C. § 1117.
The case is Refrigiwear, Inc. v Sixty International S.A., Sixty Group SPA, and Sixty SPA, No. 1:13-cv-00183-WCO, filed 08/14/13 in the U.S. District Court for the Northern District of Georgia, Gainesville Division, and has been assigned to U.S. District Judge William C. O’Kelley.