Modifiable and customizable jewellery is increasing in popularity. Self-stylized charm necklaces and bracelets are available in the marketplace by various manufacturers. Pandora Jewelry, LLC, hailing from Denmark, is a designer and retailer of such jewellery. It holds a patent in the U.S. (Patent No. 7,007,507) for an invention comprised of necklaces and bracelets with keepers and bands that keep ornaments from bunching along the strand.
Pandora does not hold a patent in Canada that is equivalent to its United States patent for its jewellery design system.
On May 6, 2009, Pandora won a three-year long patent infringement case in the U.S. against a competing manufacturer of similar jewellery, Cappola Capital Corp. (doing business as Biagi), in respect of its patent.1 A judge of the Federal District Court in Florida ruled that Biagi’s jewellery designs infringed on Pandora’s patented jewellery system used in the design of its charm bracelets and necklaces, as claimed in its patent. On May 21, 2009, the judge clarified the precise details of how Biagi’s Type A, Type B and Type C jewellery infringed Pandora’s patent.
Based on the court’s ruling, Biagi is considered an infringer upon Pandora’s patent in the United States and is prohibited from making, using, selling or importing the patented products in the United States. Biagi is also liable for associated damages.
Conversely, Biagi may be free to make, use, sell or import these products in other countries as the scope of patent protection can vary from country to country, or be non-existent. For example, Pandora does not hold a patent in Canada that is equivalent to its United States patent for its jewellery design system. Although Pandora sought world-wide patent protection for its jewellery design system, it did not proceed with filing an application in Canada, and does not appear to have patent protection in Canada for this particular jewellery design system, despite being active in the Canadian marketplace.
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This case emphasizes the importance of assessing intellectual property rights and the marketplace to maximize the protection that can be afforded to one’s inventions and products against would-be infringers.