Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Koon Chun Hing Kee Soy & Sauce Factory, Ltd. v. Kun Fung USA Trading

September 6, 2007

KOON CHUN HING KEE SOY & SAUCE FACTORY, LTD., PLAINTIFF,
v.
KUN FUNG USA TRADING, A/K/A KUN FUNG TRADING CO., SONIC GROUP, INC., WONG FAT MARKET INC., A/K/A GUNG FAT MARKET, CHEUNG FAT TRADING INC., A/K/A CHEUNG FAT MARKET, GUNG FAT TRADING INC., METROPOLITAN GROUP USA INC., CHUN WAI CHAK, A/K/A AH CHAK, YUAN XI LI A/K/A LI YUEN, A/K/A AH YUEN, XUE MEI HUANG, A/K/A MAY HUANG, SHU FONG WONG A/K/A SHU WONG, ZHE DOE, AND JOHN DOES 1-10, DEFENDANTS.



The opinion of the court was delivered by: Sifton, Senior Judge

MEMORANDUM OPINION AND ORDER

Plaintiff Koon Chun Hing Kee Soy & Sauce Factory, Ltd., brings this action against defendants Kun Fung USA Trading, a/k/a Kun Fung Trading Co.; Sonic Group, Inc.; Wong Fat Market Inc., a/k/a Gung Fat Market; Cheung Fat Trading Inc., a/k/a Cheung Fat Market; Gung Fat Trading Inc.; Metropolitan Group USA Inc.; Chun Wai Chak, a/k/a Ah Chak; Yuan Xi Li a/k/a Li Yuen, a/k/a Ah Yuen; Xue Mei Huang, a/k/a May Huang; Shu Fong Wong a/k/a Shu Wong; Zhe Doe; and John Does 1-10. In the Complaint, plaintiff alleges that defendants engaged in (1) trademark infringement, pursuant to 15 U.S.C. § 1114; (2) counterfeiting, pursuant to 15 U.S.C. § 1116; (3) trade dress infringement, pursuant to 15 U.S.C. § 1125(a); (4) unfair competition, pursuant to 15 U.S.C. § 1125(a); (5) dilution, under NY Gen. Bus. Law, Section 360-L; and (6) common law unfair competition. On July 18, 2007, the undersigned granted, in part, plaintiff's motion for an ex-parte seizure order, and also granted plaintiff's motion for a temporary restraining order.*fn1 The seizure was conducted on July 24, 2007 and confirmed by this Court after a hearing on July 31, 2007, on which date the temporary restraining order was extended until August 7, 2007.

This Court heard oral argument on plaintiff's motion for a preliminary injunction against all defendants on August 6, 2007. Defendants Sonic Group, Inc., Wong Fat Market Inc., Yuan Xi Li, Xue Mei Huang, and Shu Fong Wong agreed to extend the temporary restraining order by consent until September 5, 2007.*fn2 On August 6, 2007, I granted plaintiff's motion for a preliminary injunction against the non-appearing parties. On September 5, 2007, I heard oral argument on plaintiff's motion for a preliminary injunction against defendants Sonic Group, Inc., Wong Fat Market Inc., Yuan Xi Li, Xue Mei Huang, Chun Wai Chak,*fn3 and Shu Fong Wong. In open court, I denied plaintiff's motion for a further extension of the temporary restraining order against the appearing defendants pending a decision on plaintiff's motion for a preliminary injunction because the statutorily prescribed period for a temporary restraining order had lapsed and defendants did not consent to an extension. The only immediate and irreparable injury that plaintiff pointed to was that documents and products would be destroyed by defendants pending a decision. I concluded that such actions appeared unlikely at that stage and in any event avoidable by other means.

Now before this Court is plaintiff's motion for a preliminary injunction against defendants Sonic Group, Inc., Wong Fat Market Inc., Yuan Xi Li, Xue Mei Huang, Chun Wai Chak, and Shu Fong Wong. Upon the findings of fact and conclusions of law set forth below, plaintiff's motion is granted against defendants Sonic Group, Inc., Yuan Xi Li, Chun Wai Chak, and Shu Fong Wong, and is denied as to defendants Wong Fat Market Inc., and Xue Mei Huang.

Background

The following findings of facts are derived from the underlying allegations in plaintiff's Complaint and affidavits submitted by both parties in connection with this motion, and from proceedings before the undersigned on July 31, 2007, August 6, 2007, and September 5, 2007. There are no factual disputes between the parties requiring an evidentiary hearing. See Davis v. New York City Housing Authority, 166 F.3d 432, 437-38 (2d Cir.1999).*fn4

Plaintiff's Business and Trademarks

Plaintiff, a Hong Kong company, manufactures and distributes Cantonese food products such as sauces and seasonings under the name Koon Chun. These products are manufactured in Hong Kong and sold to exporters who buy the products on behalf of distributors around the world. The United States is one of plaintiff's largest markets.

Since September 1986, Plaintiff has been the owner of a trademark registered with the United States Patent and Trademark Office, featuring a distinctive design that is used on all Koon Chun products and in conjunction with distinctive colors and shapes (including the shape of an antique Chinese wine glass) on product labels (the "trade dress"), which serves to distinguish the products for consumers. The label design has become associated by consumers and industry with plaintiff, and plaintiff enjoys substantial goodwill from the label design owing to the length of use and the design's distinctive nature.*fn5

Defendants' Activities

There exists an illicit industry manufacturing, importing, distributing and selling unauthorized versions of products of the type made by plaintiff bearing counterfeit versions or colorable imitations of plaintiff's trademark in the United States. Over the last several years, since discovering that such counterfeiting was going on, plaintiff has initiated several actions in United States courts to halt these activities and has, on order of appropriate courts, seized a substantial number of counterfeit items. In the current action, plaintiff alleges that the defendants, all located or doing business in the New York City metropolitan area, are interrelated entities*fn6 and individuals engaged in selling counterfeit products bearing plaintiff's trademark and trade dress.

Plaintiff began investigating the activities of the current defendants in November 2006, when one of plaintiff's distributors reported that a customer, Win's Produce Inc. ("Win's"), had returned five cases of soy sauce with plaintiff's labels on them after complaining about the taste and color. The distributor sent the product to plaintiff who inspected the product and discovered that it was a counterfeit Koon Chun product, although it looked almost identical to authentic Koon Chun products.

Upon investigation, plaintiff was told that Win's had purchased the counterfeit product from a defendant named Ah Yuen. The invoice provided by Ah Yuen identified the distributor of the counterfeit product as defendant Gung Fat Trading Inc. Ah Yuen also provided Win's with a contact phone number, which plaintiff identified as a cell phone owned by defendant Xue Mei Huang. Plaintiff identified Huang's home address as 441 Maryland Avenue in Staten Island, a house co-owned by Huang and her husband Yuan Xi Li. Based on physical observations by plaintiff's investigator, it was determined that Yuan Xi Li and defendant Ah Yuen are the same person.

To further their investigation, plaintiff arranged for Win's to order additional products from Ah Yuen. That order was delivered in a white van registered in the name of Yuan Xi Li and driven by Au Yuen. The van was ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.