Appeal from the United States District Court for the District of Connecticut.
Present: HONORABLE IRVING R. KAUFMAN, Chief Judge; HONORABLE J. JOSEPH SMITH, Circuit Judge; HONORABLE INZER B. WYATT, District Judge, sitting by designation.
This cause came on to be heard on the transcript of record from the United States District Court for the District of Connecticut, and was argued by counsel.
ON CONSIDERATION WHEREOF, it is now hereby ordered, adjudged, and decreed that the order of said District Court be and it hereby is affirmed.
1. A preliminary injunction may be granted if the plaintiff has made a clear showing of either (1) probable success on the merits and possible irreparable injury, or (2) serious questions going to the merits and a balance of hardships tipping decidedly towards the party requesting relief. E.g., Semmes Motors, Inc. v. Ford Motor Co., 429 F.2d 1197, 1205-06 (1970). The grant of a preliminary injunction may not be reversed in the absence of an abuse of discretion or clear mistake of law. E.g., 414 Theater Corp. v. Murphy; 449 F.2d 1155, 1159 (2d Cir. 1974).
2. There was clear evidence that Patricelli executed annual franchise agreements with Mecca Ltd. and its subsidiaries (Mecca) and that Mecca was under no permanent obligation t Patricelli.
3. In Miss Universe, Inc. v. Patricelli, 408 F.2d 506 (2d Cir. 1969), we did not decide that Patricelli had a right superior to that of Mecca -- which was not a party to the litigation -- to the mark "Miss World--U.S.A." On the contrary, we recognized that Patricelli had an interest in using the word "World" in the title of his contests to indicate their connection to Mecca's "Miss World" pageant. 408 F.2d at 508.
4. The district judge did not abuse his discretion in determining that Mecca is likely to prevail on the contention that Patricelli, as a former licensee, is estopped from challenging the validity of Mecca's registered mark. See Professional Golfers Ass'n v. Bankers L. & C. Co., 514 F.2d 665, 671 (1975).
5. Under reasoning identical to that of Miss Universe, Inc. v. Patricelli, supra, 408 F.2d at 509, the mark "Miss World" is not "primarily geographically descriptive," 15 U.S.C. § 1052(e), but has acquired a secondary meaning.
6. The district judge did not abuse his discretion in ruling that a broad preliminary injunction, barring Patricelli from use of the word "World" in the titles of beauty pageants conducted and franchised by him, is necessary to protect Mecca. Miss Universe, Inc. v. Patricelli, supra, is clearly distinguishable on this point. We held there that a permanent injunction was overly broad because there was insufficient evidence to justify the conclusion that the title used by Patricelli had actually caused confusion with the protected mark. In this case only a preliminary injunction is at issue. Since there is no apparent purpose for which Patricelli now wishes to use the term "World" other than to cause confusion, the district judge did not abuse his discretion in concluding that Mecca is likely to be able to make the requisite showing.