A tobacco company was granted its restraining order against a similar business that allegedly stole its trademark to sell overseas.
U.S. District Judge Beth Bloom granted the order in the U.S. District Court for the Southern District of Florida on March 18.
Plaintiffs Bacson Tobacco Company, Ltd. and Miami Warehouse Logistics sued defendants Diplomatic International Company, LTD. and Heritage Tobacco, LLC for false designation of origin and federal unfair competition via the Lanham Act, common law trademark infringement and unfair competition under Florida law, cancellation of U.S. trademark registration via 15 U.S.C. section 1119, and tortious interference with business relations under Florida law.
The plaintiffs want a temporary restraining order and preliminary injunction, alleging defendants sold Bacson’s products as counterfeits, ultimately damaging the true company’s trademark and brand (especially after the product was seized at Customs and Border Patrol last year).
“Plaintiffs have demonstrated that they are substantially likely to succeed on the merits, that they will suffer immediate and irreparable harm due to defendants’ alleged actions if injunctive relief is not entered, that the threatened harm to plaintiffs outweighs the harm to defendants if injunctive relief is granted, and that injunctive relief will not harm the public interest,” Judge Bloom wrote.
The plaintiffs also took great lengths to serve the defendants. Their lawyer said that Heritage was served on March 11 and a copy of the corrected motion for temporary restraining order and preliminary injunction to Diplomatic’s legal team via email on the same day.
The temporary restraining order was granted while the preliminary injunction was deemed premature and denied. A hearing for the latter order was scheduled for April 1.
As a result, the defendants are no longer allowed to take part in any use of Bacson’s Sunny cigarette line, or its trademark.
Bacson owned Sunny and worked with its distributor, MWL. Diplomatic started selling Sunny cigarettes through the U.S., and in May 2019, MWL found out Diplomatic was selling Bacson’s products without using MWL as a mediator. Bacson ended its partnership with Diplomatic and selected MWL as its only distributor for resale of Sunny in the Caribbean.
Then, on Dec. 27, 2019, U.S. Customs and Boarder Protection seized two shipments of Sunny that Bacson manufactured and MWL was distributing. CBP said the shipment had phony products. The plaintiffs later discovered that Diplomatic had previously scored its own trademark registration for Sunny and recorded it with CBP and the U.S. Patent and Trade Mark Office (USPTO). They sued shortly after.