Rolex Watch USA Inc v. Ted Chan et al
Filing
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STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION by Judge R. Gary Klausner ( MD JS-6. Case Terminated ) (bp)
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Anthony M. Keats (Bar No. 123672)
E-Mail: akeats@kmwlaw.com
David K. Caplan (Bar No. 181174)
E-Mail: dcaplan@kmwlaw.com
Caroline Y. Bussin (Bar No. 239343)
E-Mail: cbussin@kmwlaw.com
KEATS McFARLAND & WILSON LLP
9720 Wilshire Boulevard
Penthouse Suite
Beverly Hills, California 90212
Telephone (310) 248-3830
Facsimile: (310) 860-0363
JS-6
OF COUNSEL
Brian W. Brokate (admitted pro hac vice)
Email: bwbrokate@gibney.com
John Macaluso (admitted pro hac vice)
Email: jmacaluso@gibney.com
GIBNEY, ANTHONY & FLAHERTY, LLP
665 Fifth Avenue
New York, NY 10022
Telephone: (212) 688-5151
Facsimile: (212) 688-8315
Attorneys for Plaintiff
ROLEX WATCH U.S.A., INC.
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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WESTERN DIVISION
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19 ROLEX WATCH U.S.A., INC.
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Plaintiff,
v.
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22 TED CHAN AND STEPHEN SHAR,
INDIVIDUALLY AND D/B/A LUSSO
23 TIME AND WWW.LUSSOTIME.COM;
UNKNOWN WEBSITES 1-10;
24 UNKNOWN ENTITIES 1-10; and
JOHN DOES 1-10,
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Defendants.
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Case No.: CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL
JUDGMENT AND PERMANENT
INJUNCTION
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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THIS CAUSE comes before the Court upon the joint stipulation of Defendants
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Ted Chan and Stephen Shar, individually and d/b/a LussoTime and
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www.lussotime.com (“Defendants”), and Plaintiff Rolex Watch U.S.A., Inc.
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(“Rolex”).
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Plaintiff Rolex commenced this action on March 2, 2012 against Defendants.
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In the Complaint, Rolex alleges federal trademark infringement, false designations of
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origin and false description and dilution in violation of 15.U.S.C. §§ 1114, 1125 (a)
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and (c), and unfair competition under the common law.
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NOW THEREFORE, upon consent of the parties hereto, it is
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ORDERED, ADJUDGED, AND DECREED:
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1.
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This Court has jurisdiction over the subject matter of this case and
jurisdiction over Defendant.
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2.
Venue is proper in this District pursuant to 28 U.S.C. § 1391(b).
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3.
Plaintiff Rolex is a corporation duly organized and existing under the
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laws of the State of New York, having an office and principal place of business at 665
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Fifth Avenue, New York, New York 10022.
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4.
Ted Chan is the co-owner, operator and/or controlling force behind
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LussoTime and www.lussotime.com, and resides at 3020 Lombardy Road, Pasadena,
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CA 91107.
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5.
Stephen Shar is the co-owner, operator and/or controlling force behind
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LussoTime and www.lussotime.com, and resides at 790 King Street, San Gabriel, CA
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91776.
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6.
Defendants’ principal place of business is 5482 Wilshire Blvd. # 267,
Los Angeles, CA 90036.
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Rolex is the owner of, including but not limited to, the following federal
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trademark registrations in the U.S. Patent and Trademark Office (hereinafter referred
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to as “Rolex Registered Trademarks”):
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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Trademark
Reg. No.
Reg. Date Goods
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ROLEX
101,819
1/12/15
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and clocks, and their cases.
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Watches, clocks, parts of watches
657,756
1/28/58
Timepieces of all kinds and parts
thereof.
CROWN DEVICE
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8.
The Rolex Registered Trademarks are arbitrary and fanciful and are
entitled to the highest level of protection afforded by law.
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Rolex and its predecessors have used the Rolex Registered Trademarks
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for many years on and in connection with watches, related products and in
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advertisements, posters and print ads. The Rolex Registered Trademarks identify high
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quality products originating with Rolex.
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10.
Based upon Rolex’s extensive advertising, sales and the wide popularity
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of Rolex products, the Rolex Registered Trademarks are now famous and distinctive,
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and have been famous and distinctive since well prior to the activities of the
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Defendants.
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The Rolex Registered Trademarks are valid and subsisting and in full
force and effect and have become incontestable pursuant to 15 U.S.C. § 1065.
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Long after Rolex's adoption and use of the Rolex Registered Trademarks
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on its products and after Rolex’s federal registration of the Rolex Registered
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Trademarks, Defendants began using the Rolex Registered Trademarks on the website
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www.lussotime.com and advertising that they will honor Rolex’s warranty terms and
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conditions.
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13.
Defendants are not now, nor have they ever been, associated, affiliated,
connected with, endorsed or sanctioned by Rolex.
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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14.
Rolex has never authorized or consented in any way to the use by
Defendants of the Rolex Registered Trademarks or marks confusingly similar thereto.
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Despite numerous cease and desist letters, Defendants continued to
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prominently display the Rolex Registered Trademarks without authorization from
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Rolex and continued to state that they will honor Rolex’s warranty terms and
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conditions.
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16.
Defendants’ use of the Rolex Registered Trademarks are likely to cause
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confusion, deception and/or mistake in the marketplace, relevant industry, and all
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channels of trade for Rolex’s goods and services.
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Defendant’s use of the Rolex Registered Trademarks are likely to cause
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confusion, mistake or deception as to the source of Defendant’s goods and services, as
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to an affiliation or connection between Rolex and Defendant’s goods and services, or
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as to Rolex’s approval, endorsement or sponsorship of Defendant’s goods and
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services.
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Defendants’ use of the Rolex Registered Trademarks is likely to dilute
the distinctive quality of Rolex’s Rolex Trademarks.
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Defendants’ use of the Rolex Registered Trademarks is likely to injure
the business reputation of Rolex.
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Defendants’ prominent display of the Rolex Registered Trademarks
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intentionally, maliciously and willfully infringes and dilutes upon the Rolex
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Registered Trademarks, despite knowledge that such use is illegal.
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This case constitutes an exceptional case under 15 U.S.C. § 1117(a).
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22.
Rolex has suffered irreparable harm and damages as a result of
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Defendants’ illegal acts. The injuries and damages sustained by Rolex have been
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directly and proximately caused by the Defendants’ wrongful advertisement and
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promotion using the Rolex Registered Trademarks.
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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Defendants and their officers, agents, servants, employees and all persons
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in active concert and participation with Defendants are hereby permanently restrained
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and enjoined from:
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a. imitating, copying or making unauthorized use of the Plaintiff’s Rolex
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Registered Trademarks or any mark or combination of initials
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confusingly similar thereto in any manner;
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b. engaging in any course of conduct likely to cause confusion,
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deception or mistake, or injure Rolex’s business reputation or weaken
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the distinctive quality of the Rolex Registered Trademarks, Rolex’s
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name, reputation or goodwill;
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c. using false description or representation including words or other
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symbols tending to falsely describe or represent their services as being
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those of Rolex or sponsored by or associated with Rolex and from
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offering such services in commerce;
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d. using any simulation, reproduction, counterfeit, copy or colorable
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imitation of the Rolex Registered Trademarks, or any words or initials
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confusingly similar, as a trademark, trade name, domain name or
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otherwise, in connection with the promotion, advertisement, display,
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sale, offering for sale, circulation or distribution of any services in
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such fashion or in any medium, as to relate or connect, or tend to
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relate or connect, such services in any way to Rolex, or to any goods
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or services sold, manufactured, sponsored or approved by, or
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connected with Rolex;
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e. making any statement or representation whatsoever, or using any false
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designation of origin or false description, or performing any act,
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which can or is likely to lead the trade or public, or individual
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members thereof, to believe that any services provided, products
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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manufactured, distributed, sold or offered for sale, licensed, or leased
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or rented by Defendants are in any way associated or connected with
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Rolex, or is provided, sold, manufactured,
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approved or authorized by Rolex;
licensed,
sponsored,
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f. engaging in any conduct constituting an infringement of the Rolex
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Registered Trademarks, or any words confusingly similar, of Rolex’s
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rights in or to use or to exploit said trademarks, or constituting any
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weakening of Rolex’s name, reputation and good will;
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g. using or continuing to use the Rolex Registered Trademarks or trade
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name in any variation thereof on the Internet (either in the text of a
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website, as a domain name, or as a keyword, search word, metatag, or
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any part of the description of the site in any submission for
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registration of any Internet site with a search engine or index) in
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connection with any goods or services not directly authorized by
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Rolex;
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h. acquiring, maintaining, registering or applying to register as a
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trademark, trade name, service mark, domain name or any other
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source identifier the Rolex Registered Trademarks or any other
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trademarks owned by Plaintiff, or any
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infringes or is likely to be confused with Plaintiff’s trademarks or
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trade names, or transferring conveying or assigning any such domain
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names to any entity other than Rolex;
other mark or name that
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i. otherwise unfairly competing with Rolex; and
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j. effecting assignments or transfers, forming new entities or
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associations or utilizing any other device for the purpose of
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circumventing or otherwise avoiding the prohibitions set forth in
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subparagraphs (a) through (i).
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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Judgment shall be entered jointly and severally against each person or
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entity herein referred to collectively as “Defendants” in the amount of $2,500.00 USD
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for Rolex’s damages as a result of Defendants’ conduct.
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In the event Defendant(s) breach any term of this Consent Judgment and
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Permanent Injunction, or otherwise infringe or dilute Rolex’s trademark rights, Rolex
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shall be entitled to injunctive relief, damages and profits and Defendant(s) shall pay
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Rolex attorneys’ fees and costs incurred as a result of such infringement, dilution,
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and/or breach.
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This Consent Judgment shall be binding upon and shall inure to the
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benefit of the parties and their respective heirs, successors and assigns, and acquiring
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companies.
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This Court shall retain continuing jurisdiction over this cause to enforce
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the terms of this Consent Final Judgment and Permanent Injunction and for the
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modification and/or the punishment of any violations thereof.
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The Permanent Injunction shall remain in full force and effect until
modified by order of this Court.
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Dated: July 24, 2012
HON. R. GARY KLAUSNER
UNITED STATES DISTRICT JUDGE
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Presented by:
Of Counsel:
Anthony M. Keats
Keats McFarland & Wilson LLP
9720 Wilshire Boulevard
Penthouse Suite
Beverly Hills, California 90212
Brian W. Brokate (admitted pro hac vice)
John Macaluso (admitted pro hac vice)
Gibney Anthony & Flaherty LLP
665 Fifth Avenue
New York, NY 10022
/s/Anthony M. Keats
Anthony M. Keats
Attorneys for Plaintiff
ROLEX WATCH U.S.A., INC.
Attorneys for Plaintiff
ROLEX WATCH U.S.A., INC.
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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CONSENTS TO ENTRY
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The undersigned hereby consent to the terms and conditions of this Consent
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Judgment and Permanent Injunction in the form annexed hereto and consent to the
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entry thereof.
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ROLEX WATCH U.S.A., INC.
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Dated:
, 2012
By:
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Name:
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Its:
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TED CHAN, individually and d/b/a
LUSSO TIME AND
WWW.LUSSOTIME.COM
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Dated:
, 2012
Ted Chan
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STEPHEN SHAR, individually and d/b/a
LUSSO TIME AND
WWW.LUSSOTIME.COM
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Dated:
, 2012
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Stephen Shar
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CV 12-01803 RGK (MANx)
STIPULATED CONSENT FINAL JUDGMENT
AND PERMANENT INJUNCTION
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