A Canadian company that claims Blue Nile is infringing on its patents has taken the e-tailer to court for carrying princess- and cushion-cut diamonds that display the hearts and arrows pattern.
In a suit filed May 21 in New York federal court, Worldwide Diamond Trademarks charges that the Seattle-based e-tailer, along with supplier Atit, is infringing the company’s patents for cushion-cut gemstones, as well as non-round stones displaying a hearts-and-arrows pattern. Its full complaint can be seen here.
“Prior to the invention by Worldwide Diamond of a square diamond generating the hearts and arrows pattern, no diamond in the United States, other than the perfect round, generated the hearts and arrows pattern,” the complaint says.
The company, a sightholder and Forevermark diamantaire that has been described in a past court battle as a subsidiary of Canada’s HRA Group, said in a declaration that it has made $21 million in sales selling cushion-cut and square-cut “hearts and arrows” diamonds.
But it charges that the stone offered by Blue Nile “uses the exact same combination of facets and angles in its pavilion portion as those used in [Worldwide’s] product,” with one minor difference: the table facet on Blue Nile’s diamonds “consist of eight sides of equal length while the table facet on Plaintiff’s products consists of eight sides, four of which are one length and four of which are shorter.”
As a result of Blue Nile’s sales, it claims that retailers have withdrawn their interest in its product.
The suit charges patent infringement as well as trade dress infringement. (Trade dress generally refers to a product’s physical appearance or style of presentation.) The company seeks an injunction against the products in question, as well as unspecified damages.
In counterclaims, one of which can be seen here, Blue Nile and Atit argued Worldwide is “not the originator of a square or princess cut diamond specifically structured to generate a ‘hearts and arrows’ optical pattern,” nor the only company that carries it. It further argues that “hearts and arrows” is “a functional feature of a diamond in which no trade dress protection is or can be available.”
The e-tailer calls the suit “vexatious and bad faith litigation” and asks that one of Worldwide’s patents be ruled invalid.
Blue Nile declined further comment. Atit and World Diamond Trademarks’ attorneys did not respond to emails requesting comment.