Opinion
Case No. C-03-02196 CRB
October 1, 2003
WHITE COOPER, LLP Marcy J. Bergman, SBN 75826 M. Elizabeth Deen, SBN 166672 Kelly Y. Chang, SBN 206809 COOPER, WHITE COOPER, LLP 201 California Street, San Francisco, California, for Plaintiff PAT CHUN INTERNATIONAL, LTD
ROPERS MAJESKI KOHN BENTLEY, Robert P. Andris, Elise Vasquez, for Defendant KIM SENG COMPANY
CONSENT JUDGMENT AND PERMANENT INJUNCTION
The parties hereto having agreed to a settlement of the claims between them, and having stipulated to entry of this Consent Judgment and Permanent Injunction, it is hereby ORDERED, ADJUDGED AND DECREED:
1. This court has jurisdiction over Plaintiff Pat Chun International, Ltd. and over Defendant Kim Seng Company, and over the subject matter at issue in this action. Defendant consents to jurisdiction of this court for the purpose of executing and enforcing this Consent Judgment and Permanent Injunction and the settlement agreement reached-by the parties in this action, and this court retains jurisdiction for this purpose.
2. Plaintiff is a manufacturer of vinegars and sauces, including sweetened vinegar products, which Plaintiff has manufactured and sold since the early 1930s. Defendant imports and sells sweetened vinegar products bearing a label, a copy of which is attached hereto as Exhibit 1.
3. Plaintiff's vinegars and sauces are sold under the following marks (hereinafter collectively referred to as "PAT CHUN MARKS"):
a) "PAT CHUN" word mark, as reflected on USPTO Trademark Reg. No. 2,051,993 attached as Exhibit 2.
b) Chinese characters as a word mark, as reflected on USPTO Trademark Reg. No. 2,203,481 attached as Exhibit 3.
c) PAT CHUN design mark, as reflected on the USPTO Trademark Reg. No. 2,197,718 attached as Exhibit 4.
d) PAT CHUN circle logo design mark, as reflected on USPTO Trademark Reg. No. 2,201,862 attached as Exhibit 5.
e) PAT CHUN design mark, as reflected on USPTO Trademark Reg. No. 2,574,789 attached as Exhibit 6.
f) PAT CHUN circle logo design mark, as reflected on USPTO Trademark Reg. No. 2,653,031 attached as Exhibit 7.
4. Plaintiff's vinegar and sauce products bear a trade dress that includes a red and gold label as shown in Exhibit 8 and described as follows: An overall appearance consisting of a gold border within which a yellow and red design pattern is shown at the top and bottom portions of the label; background coloring whose primary color is red; the four Chinese characters in the center portion of the label highlighted by a stylized gold decorative border around the characters; a circle logo at the top center portion of the label composed of a stylized drawing of a fish and the letter "P" on a yellow background; and, a rectangular box in the center lower portion of the label outlined in a gold border setting forth the "ingredients" of the products (hereinafter "PAT CHUN TRADE DRESS").
5. Plaintiff has the exclusive right to use the "PAT CHUN" word mark as reflected on USPTO Trademark Reg. No. 2,051,993 attached as Exhibit 2, for the goods and services set forth in said registration, to identify the source or origin of Plaintiff s goods and services and to distinguish Plaintiffs goods and services from those of others.
6. Plaintiff has the exclusive right to use the Chinese characters word mark as reflected on USPTO Trademark Reg. No. 2,203,481 attached as Exhibit 3, for the goods and services set forth in said registration, to identify the source or origin of Plaintiffs goods and services and to distinguish Plaintiffs goods and services from those of others.
7. Plaintiff has the exclusive right to use the PAT CHUN design mark as reflected on the USPTO Trademark Reg. No. 2,197,718 attached as Exhibit 4, for the goods and services set forth in said registration, to identify the source or origin of Plaintiffs goods and services and to distinguish Plaintiffs goods and services from those of others.
8. Plaintiff has the exclusive right to use the PAT CHUN circle logo design mark, as reflected on USPTO Trademark Reg. No. 2,201,862 attached as Exhibit 5, for the goods and services set forth in said registration, to identify the source or origin of Plaintiffs goods and services and to distinguish Plaintiffs goods and services from those of others.
9. Plaintiff has the exclusive right to use the PAT CHUN design mark, as reflected on USPTO Trademark Reg. No. 2,574,789 attached as Exhibit 6, for the goods and services set forth in said registration, to identify the source or origin of Plaintiffs goods and services and to distinguish Plaintiff's goods and services from those of others.
10. Plaintiff has the exclusive right to use the PAT CHUN circle logo design mark as reflected on USPTO Trademark Reg. No. 2,653,031 attached as Exhibit 7, for the goods and services set forth in said registration, to identify the source or origin of Plaintiff s goods and services and to distinguish Plaintiffs goods and services from those of others.
11. Plaintiff has the exclusive right to use the PAT CHUN TRADE DRESS to identify the source or origin of Plaintiffs goods and services and to distinguish Plaintiff's goods and services from those of others.
12. Defendant, and each of its officers, principals, directors, agents, servants, employees, distributors, sales agents, subsidiaries, affiliates, successors and other related entities, and persons in active concert or participation with any of them who receive actual notice of this order by personal service or otherwise, are permanently enjoined from importing, manufacturing, selling, promoting, advertising and distributing products bearing the PAT CHUN MARKS as set forth in paragraph 3(a) through 3(f) above, and from otherwise using the PAT CHUN MARKS or any other mark, label, package, symbol, character, lettering, design, sign or brand that copies, imitates, or is confusingly similar to the PAT CHUN MARKS.
13. Defendant, and each of its officers, principals, directors, agents, servants, employees, distributors, sales agents, subsidiaries, affiliates, successors and other related entities, and persons in active concert or participation with any of them who receive actual notice of this order by personal service or otherwise, are permanently enjoined from importing, manufacturing, selling, promoting, advertising and distributing products bearing the PAT CHUN TRADE DRESS, and from otherwise using the PAT CHUN TRADE DRESS or any other trade dress, mark, label, packaging, symbol, character, lettering, design, sign, brand or container that copies, imitates, or is confusingly similar to the PAT CHUN TRADE DRESS.
14. Defendant, and each of its officers, principals, directors, agents, servants, employees, distributors, sales agents, subsidiaries, affiliates, successors and other related entities, and persons in active contact or participation with any of them who receive actual notice of this order by personal service or otherwise, shall immediately destroy any and all labels, packaging, signs, advertising materials, marketing materials, brochures, fliers, posters, stationery, business cards and documents that include or reference the PAT CHUN MARKS or that include or reference the PAT CHUN TRADE DRESS. Defendant shall certify the destruction thereof in writing to Plaintiffs attorneys on or before October 15, 2003.
15. Defendant, and each of its officers, principals directors, agents, servants, employees, distributors, sales agents, subsidiaries, affiliates, successors and other related entities, and persons in active contact or participation with any of them who receive actual notice of this order by personal sendee or otherwise, are permanently enjoined from using the label, a copy of which is attached hereto as Exhibit 1. Defendant shall immediately destroy any and all labels in its possession, custody or control (including destruction of all exemplars, prototypes and materials used to print such label), and shall certify the destruction thereof in writing to Plaintiff's attorneys on or before October 15, 2003. Defendant shall direct its suppliers and manufacturers to likewise immediately destroy any and all labels in their possession, custody or control (including destruction of all exemplars, prototypes and materials used to print such label), and shall certify the destruction thereof in writing to Plaintiffs attorneys on or before October 15, 2003.
16. Defendant represents that Defendant has a total of 128 cases of unsold products bearing the label, a copy of which is attached hereto as Exhibit 1, comprising of 70 cases of 590 ml size bottles and 58 cases of 1 gallon size bottles. Defendant is enjoined from selling, transferring or otherwise disposing of the 128 cases of unsold inventory bearing the label attached as Exhibit 1. However, Defendant may sell, transfer and otherwise dispose of the 128 cases if all the following conditions are met: (a) Defendant completely remove all existing labels on such products and replace them with a label that does not contain, copy or imitate the PAT CHUN MARKS and PAT CHUN TRADE DRESS, and is not otherwise confusingly similar to the PAT CHUN MARKS and PAT CHUN TRADE DRESS; and (b) at least 10 days prior to the sale of such products, Defendant and its attorneys shall provide written certification to Plaintiff's attorneys verifying that all existing labels have been removed and replaced with new labels.
17. Each party to bear their own attorneys fees and costs.
18. The parties and their attorneys may execute this Consent Judgment and Permanent Injunction by counterpart copies, and receipt by facsimile transmission of executed copies shall be legally binding. Plaintiff's attorneys on or before October 15, 2003,
16. Defendant represents that Defendant has a total of 128 cases of unsold products bearing the label, a copy of which is attached hereto as Exhibit l, comprising of 70 cases of 590 ml size bottles and 58 cases of I gallon size bottles. Defendant is enjoined from selling, transferring or otherwise disposing of the 128 cases of unsold inventory bearing the label attached as Exhibit 1 However, Defendant may sell, transfer and otherwise dispose of the 128 cases if all the following conditions are met: (a) Defendant completely remove all existing labels on such products and replace them with a label that docs not contain, copy or imitate the PAT CHUNMARKS and PAT CHUN TRADE DRESS, and is not otherwise confusingly similar to the PAT CHUN MARKS and PAT CHUN TRADE DRESS; and (b) at least 10 days prior to the sale of such products, Defendant and its attorneys shall provide written certification to Plaintiff's attorneys verifying that all existing labels have been removed and replaced with new labels.
17. Each party to bear their own attorneys fees and costs.
18. The parties and their attorneys may execute this
Injunction by counterpart copies, and receipt by facsimile transmission of executed copies shall be legally binding.