Opinion
Case No. 8:17-cv-619-CJC (DFMx)
01-25-2019
ALLERGAN, INC., Plaintiff, v. DERMAVITA LIMITED PARTNERSHIP, DIMA CORP. S.A., and KBC MEDIA RELATIONS LLC, Defendants.
FINAL JUDGMENT OF TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, TRADEMARK DILUTION, AND FALSE ADVERTISING AGAINST DEFENDANT DIMA CORP, S.A.
The Court hereby enters the following Final Judgment of Trademark Infringement, Unfair Competition, Trademark Dilution, and False Advertising Against Defendant Dima Corp. S.A.
I. BACKGROUND AND PROCEDURAL HISTORY
This is an action for trademark infringement, unfair competition, trademark dilution, and false advertising under the United States Trademark Act, 15 U.S.C. §§ 1051 et seq., as amended. These claims are within the subject matter of the jurisdiction of this Court pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338(b). This Court has personal jurisdiction over Defendant Dima Corp. S.A. ("Dima Corp.") because it has committed, or aided, abetted, contributed to and/or participated in the commission of the tortious act of trademark infringement and the other claims asserted by Plaintiff Allergan, Inc. ("Allergan") which have led to foreseeable harm and injury to Allergan in the State of California. Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b).
Dima Corp. stipulated to the entry of a preliminary injunction against it during the pendency of this case based on a sufficient likelihood that Allergan would ultimately prevail on the merits of its claims. [Dkt. 38.] The Court entered the parties' proposed order granting preliminary relief on July 21, 2017. [Dkt. 40.]
II. FINDINGS OF FACT
A. Scope of Allergan's Rights
Together with its corporate affiliates, Allergan is a global pharmaceutical company that manufactures, develops, markets, and sells a range of products, including a collection of dermal fillers marketed under the trademark JUVÉDERM. Allergan's JUVÉDERM collection of dermal fillers is marketed to the general public but is designed to be administered by healthcare professionals and is indicated for improving the appearance of facial lines and wrinkles. The primary active ingredient in Allergan's JUVÉDERM products is hyaluronic acid. Allergan owns a number of valid and subsisting U.S. trademark registrations for or including JUVÉDERM (collectively, the "JUVÉDERM Marks"), including but not limited to U.S. Registration Nos.: 3,706,974; 4,380,506; 4,380,507; and 4,481,317.
Allergan has spent more than $122 million in direct-to-consumer advertising of JUVÉDERM products since launching the brand in the United States in 2007, and as a result sales of the JUVÉDERM products have exceeded $2 billion (USD). Allergan's extensive use, promotion, and exposure of its JUVÉDERM Marks on and in connection with its JUVÉDERM products has rendered the JUVÉDERM Marks famous in the United States. Allergan would suffer immediate and irreparable harm if it were to lose control over the goodwill it has created surrounding its JUVÉDERM Marks.
B. Dima Corp.'s Infringement of Allergan's JUVÉDERM Marks and False Advertisement of "Juvederm"-Branded Products
At least as early as 2015, Defendant Dermavita Limited Partnership ("Dermavita") began creating and promoting cosmetic skincare products outside the United States under the mark JUVEDERM. Dermavita sought registration of its mark in the European Union and, by extension, in the United States. On March 17, 2017, Dima Corp. announced via press release (the "Press Release") that it had acquired a "full license" from Dermavita "to develop and market cosmetic products under the nearly-identical Juvederm trademark" (the "Dermavita Juvederm Mark") and that it intended to immediately introduce skincare products that would be available in "2000+ doctor's offices in the United States by June 2017." The products were advertised as containing hyaluronic acid and were designed to be used by consumers in conjunction with Allergan's JUVÉDERM products. Among the products intended for distribution in the United States by Dima Corp. was a "Juvederm"-branded aftercare product for patients who had just received injections of Allergan's genuine JUVÉDERM filler products. "Juvederm"-branded products were promoted on Dima Corp.'s websites located at www.juvedermlab.com and www.dimacorp.lu as well as through a mobile application.
The Press Release contained statements that could mislead consumers into thinking those products were approved as "drugs" by the U.S. Food and Drug Administration, when in fact they were not. The press release also contained statements about a "Juvederm" mobile application that could mislead consumers into thinking those products were approved as diagnostic medical devices, when in fact they were not.
Dima Corp. had both constructive and actual notice of the JUVÉDERM Marks at the time the Press Release was issued. Dermavita's Juvederm Mark is confusingly similar to Allergan's JUVÉDERM Marks, as evidenced by at least one instance of actual consumer confusion.
III. CONCLUSION AND JUDGMENT
Based on the foregoing findings of fact, the Court finds sufficient basis to enter final judgment on the merits against Dima Corp. for: non-willful federal trademark infringement in violation of 15 U.S.C. § 1114(1); federal unfair competition in violation of 15 U.S.C. § 1125(a)(1); federal trademark dilution in violation of 15 U.S.C. § 1125(c); and federal false advertising in violation of 15 U.S.C. § 1125(a)(1)(b), (i.e., Counts One through Four of the Complaint). Count Five of the Complaint is dismissed without prejudice.
The Court's Order Granting Preliminary Injunctive Relief of July 21, 2017, [Dkt. 40], will be vacated upon entry of this Final Judgment and the Order Granting Permanent Injunctive Relief to be entered contemporaneously herewith.
IT IS SO ORDERED. DATED: January 25, 2019
/s/_________
The Hon. Cormac J. Carney
United States District Court Judge