San Diego Trademark Attorney® Blog

Martha Stewart, Emeril, HSN Sued Over German Knife Trademark Infringement

September 17, 2012

knife.jpg San Diego -- Martha Stewart, her company, Home Shopping Network and Emeril Lagasse were sued last week by a German regional chamber of commerce alleging they are promoting knives marked with the German "Solingen" trademark despite the knives' Chinese origin.

The Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid is a German trade association that owns the "certification mark" "Solingen" in connection with high-quality German products, according to its complaint in the Southern District of Florida filed on Sept. 11.

The Solingen trade name dates back to roughly 1853, and represents the finest quality in German cutlery and other German products, the chamber says. Cutlery solid under the Solingen name is manufactured in Solingen, Germany, and the brand name certifies that the goods its name appears on are of a certain origin and comply with very specific high standards of manufacture.

The cutlery includes knives and blades of all kinds and has been made in Solingen for centuries, with its roots in sword and dagger making. Protection under the name Solingen is provided by special legislation in Germany, the Solingen Decree, which requires that goods marked with the brand meet strict conditions.

Under the decree, anyone selling cutlery or related goods that are not made in Solingen must not give the impression to consumers that their products are made there.

Earlier this year the chamber discovered that some types of cutlery products were being distributed through HSN marked with both the Solingen name and the word "China." After an investigation, the chamber determined that the defendants are selling and distributing different types of cutlery bearing counterfeit and infringing uses of the Solingen trademark.

The knives are marked with Emeril's own trademark name, with "Solingen, Germany" marked on one side of the blade and "China" on the other. Martha Stewart Living Omnimedia Inc. is the current owner of the Emeril brand.

"The spurious mark and designation used by defendants in interstate commerce are identical with, or substantially indistinguishable from, the Solingen certification mark," the complaint says.

The infringing products are likely to cause consumer confusion, wrongly trade on the goodwill and reputation of the Solingen mark, and have unjustly enriched their makers and distributors, according to the chamber.

Stewart, Lagasse and the companies have "disparaged and tarnished" the trademark, the complaint says. Moreover, the counterfeit products are of much poorer quality than the genuine article, as customers have complained of knives rusting and breaking in half, it says.

Lagasse in particular is well aware of the sanctity of the Solingen name, having teamed up with German cutlery company Wüsthof Dreizackwerk KG in 2002 to produce a line of co-branded products. Wüsthof is a well-known company with a factory in Solingen, and properly uses the trademark on their premium cutlery, according to the chamber.