Gerawan Farming, Inc. v. Prima Agrotrading, S.A.

Filing 23

STIPULATED JUDGMENT AND PERMANENT INJUNCTION filed by Judge S. James Otero against defendant Prima Agrotrading, S.A. (see document for specifics).(MD JS-6. Case Terminated) (lc)

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SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
A Limited Liability Partnership
Including Professional Corporations
JILL M. PIETRINI, Cal. Bar No. 138335
[e-mail]
PAUL A. BOST, Cal. Bar No. 261531
[e-mail]
1901 Avenue of the Stars, Suite 1600
Los Angeles, California 90067-6055
Telephone: [phone]
Facsimile: 310.228.3701
Attorneys for Plaintiff
GERAWAN FARMING, INC.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION

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JS-6

Gerawan Farming, Inc.,
Plaintiff,
v.

Case No. 2:10-cv-07778-SJO-MAN
STIPULATED JUDGMENT AND
PERMANENT INJUNCTION

Prima Agrotrading, S.A.,

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Defendant.

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IT IS HEREBY STIPULATED by and between plaintiff Gerawan Farming,

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Inc., a corporation of the State of California ("Plaintiff”), and defendant Prima

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Agrotrading, S.A, a corporation of Chile (“Defendant"), that a Judgment shall be

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entered to fully and finally dispose of this action and that the Judgment be as

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follows:

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WHEREAS, Plaintiff is the owner of the PRIMA mark in block letters and

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the PRIMA and PRIMA READY READY TO EAT trademarks shown below for

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various goods and services and owns the following trademarks for various goods

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and services and the registrations issued by the United States Patent & Trademark

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Office ("PTO") shown below:

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MARK

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PRIMA

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PRIMA SWEET
PERSONALLY
SELECTED

CLASS: GOODS

REG. NO./
REG. DATE

Class 31: Fresh fruits,
namely, table grapes,
peaches, plums,
nectarines, and apricots

1,441,378

Class 31: Fresh grapes,
peaches, nectarines, plums
and apricots

1,585,993

Class 35: Computer
services, namely providing
an online interactive
database for the planning
and scheduling of
shipments of commodities
and for the reporting of
sales and accounting
therefor; information on a
variety of topics relevant
to the planning and
scheduling of shipments of
commodities, namely
economic and
commodities production
forecasts and market
research

3,089,809

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6/2/87

3/6/90

5/9/06

STATUS

Renewed
Incontestable
Registration

Renewed
Incontestable
Registration

Registered

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REG. NO./
REG. DATE

STATUS

Class 35: Computer
services, namely providing
an online interactive
database for the planning
and scheduling of
shipments of commodities
and for the reporting of
sales and accounting
therefor; information on a
variety of topics relevant
to the planning and
scheduling of shipments of
commodities, namely
economic and
commodities production
forecasts and market
research

3,089,808

Registered

Class 20: Non-metal
pallets

3,789,495

MARK

CLASS: GOODS

PRIMATRAK

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5/9/06

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PRIMA

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Registered

5/18/10

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Class 20: Non-metal
pallets

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3,789,494

Registered

5/18/10

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Class 31: Fresh fruits

3,592,505

Registered

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3/17/09

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Class 31: Fresh fruits

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3,833,518

Registered

8/17/10

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which are collectively referred to herein as the “PRIMA Marks;"
WHEREAS, on October 18, 2010, Plaintiff filed its Complaint in this action
against Defendant;
WHEREAS, in its Complaint, Plaintiff alleged that Defendant was using the
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PRIMA mark in interstate commerce in conjunction with their sale and importation

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of fresh produce without the consent of Plaintiff;

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WHEREAS, on November 7, 2011, Defendant was properly served with the

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Complaint, Summons, and accompanying documents via the Inter-American

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Convention on Letters Rogatory, to which both the United States and Chile are both

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parties;

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WHEREAS, on February 29, 2012, Plaintiff filed the proof of service of the

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Complaint, Summons, and accompanying documents on Defendant with the Court

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(Docket No. 15);

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WHEREAS, on March 1, 2012, Plaintiff filed a request for entry of default as
to Defendant by the Court's clerk (Docket No. 16);
WHEREAS, on March 16, 2012, the Court found good cause for the clerk's

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entry of default (Docket No. 18) and the Court entered default as to Defendant

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(Docket No. 19);

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WHEREAS, Plaintiff and Defendant have entered into a settlement

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agreement dated March 8, 2012 (the “Agreement”) with the mutual intention of

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resolving all disputes between them which arise from the allegations of the

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Complaint;

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WHEREAS, Defendant submits to the jurisdiction of this Court and hereby
makes a general appearance in this matter; and

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WHEREAS, this Court has jurisdiction over the subject matter of this

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controversy pursuant to 15 U.S.C. § 1121(a) (Lanham Act jurisdiction), 28 U.S.C. §

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1331 (federal question jurisdiction), 28 U.S.C. § 1338(a) (trademark and copyright

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jurisdiction) and 28 U.S.C. § 1338(b) (unfair competition jurisdiction);

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THE COURT HEREBY ORDERS, ADJUDGES AND DECREES:

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1.

Permanent Injunction. Defendant and its past and present officers,

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directors, servants, employees, partners, parent entities, subsidiaries, affiliates,

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representatives, licensees, related companies, shareholders, successors, assigns,
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attorneys and agents, and all persons in active concert or participation with

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Defendant or with any of the foregoing, hereby agree to permanently refrain from:

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(a)

Manufacturing, transporting, promoting, importing, advertising,

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publicizing, distributing, displaying, offering for sale or selling any good or service

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under any of the PRIMA Marks, or any other mark, name, symbol, design or logo

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that is likely to cause confusion or to cause mistake or to deceive persons into the

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erroneous belief that any goods or services that Defendant caused to enter the

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stream of commerce originate or have their source with Plaintiff, or are sponsored,

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licensed, or endorsed by Plaintiff, or are authorized by Plaintiff, or are connected or

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affiliated with Plaintiff;
(b)

Manufacturing, transporting, promoting, importing, advertising,

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publicizing, distributing, displaying, offering for sale or selling any good or service

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under any of the PRIMA Marks or any other mark, name, symbol, design or logo

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that is confusingly similar to or a reproduction, counterfeit, copy, or colorable

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imitation of, or incorporates, the PRIMA Marks;

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(c)

Using PRIMA or any other mark or name that is confusingly

similar thereto in or as part of a domain name or a company name;
(d)

Falsely implying Plaintiff's endorsement of any of Defendant's

commercial activities, Defendant's goods or services, or Defendant's business;
(e)

Representing that Plaintiff has endorsed, sponsored, licensed,

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approved, or is affiliated with Defendant or Defendant's products or that

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Defendant's products are affiliated or connected with Plaintiff's products;

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(f)

Seeking to register any of the PRIMA Marks or any other mark,

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name, symbol, design or logo that is confusingly similar to or a reproduction,

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counterfeit, copy, or colorable imitation of, or incorporates, the PRIMA Marks in

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any country of the world; and

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(g)

Assisting, inducing, aiding or abetting any person or business

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entity in engaging in or performing any of the activities referred to in sub-

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paragraphs (a) to (f), inclusive, above.

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2.

Delivery and Destruction of Infringing Articles. Within thirty court

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days of the Parties’ entry of this Judgment by the Court, Defendant shall: (a)

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destroy, erase or alter all labels, tags, packaging, boxes, advertising materials,

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marketing materials, and any other physical objects in its possession, custody, or

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control so as to terminate all uses of the PRIMA mark; and (b) delete or alter all

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electronic media under its control (including, without limitation, web pages and

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metatags) so as to remove all uses of the PRIMA mark.
3.

Notification to Customers. Within thirty court days of the Parties’

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entry of this Judgment by the Court, Defendant shall notify all distributors and

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retailers of its products that Defendant is not authorized to use the PRIMA mark

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and does not have the authority or right to grant any third party, including said

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distributors or retailers, permission to use the PRIMA mark.

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4.

Change of Corporate Name. Within thirty court day of the Court's

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entry of Judgment, Defendant will change its corporate name with the appropriate

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governmental entity of Chile from Prima Agrotrading, S.A. to Priagro, S.A., and

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will take action within its control to change the listing of its company name

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anywhere else in the world from Prima Agrotrading, S.A., to Priagro, S.A.

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5.

Cancellation, Abandonment, Withdrawal, and Relinquishment of

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Trademark Registrations and Applications. Within thirty court days of the Court's

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entry of Judgment, Defendant will cancel, abandon, withdraw, or relinquish, as the

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case may be, any trademark registrations or pending applications anywhere in the

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world to register PRIMA or any other mark, name, symbol, design or logo that is

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confusingly similar to or a reproduction, counterfeit, copy, or colorable imitation of,

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or incorporates, the PRIMA Marks.

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6.

Transfer of Website. Within thirty court days of the Court's entry of
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the Judgment, Defendant shall transfer to Plaintiff or its designated agent or

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representative ownership of the domain name <<prima-agrotrading.cl>>.

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Defendant shall cooperate with Plaintiff as reasonably necessary to effect the

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transfer.

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7.

Monetary Payment. Defendant acknowledges that it has paid the sum

of USD $5,000 to Plaintiff by company check to resolve this case.
8.

Proof of Compliance. Within forty-five court days of the Court’s entry

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of the Judgment, Defendant shall serve upon Plaintiff a declaration under penalty of

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perjury that it has complied with the terms of the Judgment and the Agreement,

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including the measures described in Paragraphs 2-5 supra. The format for this

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proof of compliance is attached hereto as Exhibit A.

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9.

Attorneys’ Fees and Costs. Each party shall bear its own attorneys’

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fees and costs arising out of, related to, or incurred in this action, except as

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provided in the Agreement and in paragraphs 7-8 infra.

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10.

Violation of Judgment – Contempt of Court. In the event that any part

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of this Judgment is violated by Defendant, or by any of its present or former

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officers, directors, agents, servants, employees, shareholders, partners or

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representatives, or by any person in active concert and participation with Defendant

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that receives notice of this Judgment, Plaintiff may file and serve a motion for

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contempt seeking damages, attorneys’ fees, expert witness fees, and/or other

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appropriate relief.

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11.

Violation of Judgment -- Prevailing Party Fees and Costs. In an action

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or proceeding based upon an allegation that a party has violated this Judgment, the

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prevailing party shall be entitled to recover all of its reasonable attorneys’ fees,

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expert witness fees, and other costs incurred in connection with the action or

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proceeding. This paragraph shall not be construed to limit any party’s rights,

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remedies or procedural options.

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12.

Binding Effect. This Judgment shall be binding upon and inure to the
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benefit of the parties and all successors, assigns, parent entities, subsidiaries,

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officers, directors, members, shareholders, agents, affiliates, all entities which are

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“related companies” within the meaning of 15 U.S.C. § 1055, and other persons

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who are in active concert or participation with anyone described herein, who

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receive actual notice of this Judgment by personal service or otherwise.

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13.

Continuing Jurisdiction. This Court shall retain jurisdiction to enforce

this Judgment and the Agreement.
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No Territorial Limit. This Judgment shall be enforceable against any

of Defendant for any acts that violate this Judgment that occur inside and/or outside
of the United States of America.
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Final Judgment. This Judgment shall be a final adjudication of all

claims alleged by Plaintiff in this action, and this Judgment is not appealable.

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SO ORDERED:

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June 12, 2012
Date:

United States District Court Judge

Approved as to content and form:
PLAINTIFF GERAWAN FARMING, INC.
By:
Name:__________________________
Title:___________________________

Date:

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DEFENDANT PRIMA AGROTRADING, S.A.

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By:
Name:__________________________
Title:___________________________

Date:
W02-WEST:2PAB1\404866137.1

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