BMW of North America, LLC et al v. Padova Wheels, Inc. et al

Filing 45

PERMANENT INJUNCTION AGAINST DEFENDANT SALAHUDIN NUDIN NLN D/B/A PIONEER TIRE AND WHEEL AND DISMISSAL, WITH PREJUDICE filed by Judge Andre Birotte Jr.: Upon Stipulation 44 , the Court hereby ORDERS, ADJUDICATES and DECREES that a permanent injunctio n shall be and hereby is entered against Defendant Salahudin Nudin Nln d/b/a Pioneer Tire and Wheel re BMW's intellectual properties, trademarks, designs, patents, etc. No appeals shall be taken from this Permanent Injunction, and the parties w aive all rights to appeal. Each party shall bear their own attorneys' fees and costs incurred in this matter. Upon entry of this Permanent Injunction against Defendant, the case shall be dismissed as to Defendant, with prejudice. See document for further details. (gk)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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EASTERN DIVISION

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BMW OF NORTH AMERICA, LLC, et
al.,
Plaintiffs,

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v.

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PADOVA WHEELS, INC., et al.,
Defendants.

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Case No.: 5:16-cv-01373 AB (RAOx)
[PROPOSED]
PERMANENT INJUNCTION
AGAINST DEFENDANT
SALAHUDIN NUDIN NLN D/B/A
PIONEER TIRE AND WHEEL
AND DISMISSAL, WITH
PREJUDICE
Honorable André Birotte Jr.

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The Court, pursuant to the Stipulation for Entry of Permanent Injunction and

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Dismissal (“Stipulation”), by and between Plaintiffs BMW of North America, LLC

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(“BMW NA”) and Bayerische Motoren Werke AG (“BMW AG”) (collectively

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“Plaintiffs”), and Defendant Salahudin Nudin Nln d/b/a Pioneer Tire and Wheel

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(“Defendant”) filed concurrently herewith, hereby ORDERS, ADJUDICATES and

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DECREES that a permanent injunction shall be and hereby is entered against

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Defendant in the above-referenced matter as follows:

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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PERMANENT INJUNCTION.

Defendant, and any person or

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entity acting in concert with, or at the direction of Defendant, including any and

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all agents, servants, employees, partners, assignees, distributors, suppliers,

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resellers and any others over which Defendant may exercise control, is hereby

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restrained and enjoined, pursuant to 15 United States Code (“U.S.C.”) §1116(a)

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and 35 U.S.C. §283, from engaging in, directly or indirectly, or authorizing or

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assisting any third party to engage in, any of the following activities in the United

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States and throughout the world:
(i)

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copying, manufacturing, importing, exporting, purchasing,

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marketing, selling, offering for sale, distributing or dealing in any product or

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service that uses, or otherwise making any use of, any of BMW’s intellectual

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properties, including but not limited to the BMW®-, M®-, 3 SERIES®-, 5

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SERIES®-, 6 SERIES®- and/or 7 SERIES®-trademarks and/or Plaintiffs’ design

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patents D29/511,036; D516,989; D615,018 C1; D617,712; D621,770; D621,771;

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D635,078; D643,794; D558,114; D671,473; and D686,130 (collectively

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hereinafter “BMW’s Intellectual Properties”), and/or any intellectual property that

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is confusingly or substantially similar to, or that constitutes a colorable imitation

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of, any BMW Intellectual Properties, whether such use is as, on, in or in

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connection with any trademark, service mark, trade name, logo, design, Internet

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use, website, domain name, metatags, advertising, promotions, solicitations,

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commercial exploitation, television, web-based or any other program, or any

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product or service, or otherwise;

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(ii)

advertising or displaying images and/or photographs of non-

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genuine BMW automobile wheel rims with a BMW®, M®, 3 SERIES®, 5

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SERIES®, 6 SERIES®-and/or 7 SERIES® trademark;

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(iii)

advertising or selling non-genuine BMW automobile rims,

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center caps, or badges;

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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(iv)

using BMW Intellectual Properties, including but not limited

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to the BMW®, M®, 3 SERIES®, 5 SERIES®, 6 SERIES® and 7 SERIES®

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trademarks in advertising to suggest that non-genuine BMW products being

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advertised are sponsored by, endorsed by, or are otherwise affiliated with BMW

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and/or advertising non-genuine BMW automobile wheel rims and other non-

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genuine BMW automotive parts using descriptions that imply that the products are

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genuine BMW products;

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(v)

using, advertising or displaying BMW’s trademarks, including

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but not limited to BMW®-, M®-, 3 SERIES®-, 5 SERIES®-, 6 SERIES®- or 7

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SERIES®-trademarks, to suggest that non-genuine BMW products being

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advertised are manufactured, sponsored or endorsed by BMW or advertising non-

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genuine BMW automobile parts or related products using descriptions that imply

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the products are genuine BMW products. Defendant may, however, use “BMW”

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or other BMW wordmarks to advertise non-BMW products with fair use

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descriptions such as ‘for BMW automobiles’ or ‘fits BMW model _______,’ or

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similar language, provided that “BMW” and any other BMW wordmarks that are

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used are in the identical font, format, size, and color as, and no more prominently

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displayed than the surrounding text. In no event may any BMW logos, design

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marks, or other graphical trademarks be used under this exception;

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(vi)

performing or allowing others employed by or representing

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Defendant, or under Defendant’s control, to perform any act or thing which is

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likely to injure Plaintiffs, any BMW Intellectual Properties, including but not

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limited to the BMW®, M®, 3 SERIES®, 5 SERIES®, 6 SERIES® and 7

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SERIES® trademarks and/or Plaintiffs’ design patents, and/or Plaintiffs’ business

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reputation or goodwill, including making disparaging, negative, or critical

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comments regarding Plaintiffs or their products and services;

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(vii) engaging in any acts of trademark infringement, false
designation of origin, dilution, unfair competition, design patent infringement, or
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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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other act which would tend damage or injure Plaintiffs; and/or

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(viii) using any Internet domain name or website that includes any of

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Plaintiffs’ trademarks or design patents, including but not limited to the BMW®,

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M®, 3 SERIES®, 5 SERIES®, 6 SERIES® and 7 SERIES® marks and/or design

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patents D29/511,036; D516,989; D615,018 C1; D617,712; D621,770; D621,771;

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D635,078; D643,794; D558,114; D671,473; and D686,130.
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Defendant is ordered to deliver immediately for destruction all

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counterfeit, infringing or otherwise unauthorized products, including automobile

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wheel rims, center caps, emblems, badges, labels, signs, prints, packages,

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wrappers, receptacles and advertisements relating thereto, in his possession and/or

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under his control embodying, comprised, utilizing and/or bearing any BMW

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Intellectual Properties, or any simulation, reproduction, counterfeit, copy or

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colorable imitations thereof, and all plates, molds, heat transfers, screens, matrices

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and other means of making the same, to the extent that any of these items are in

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Defendant’s possession.

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3.

This Permanent Injunction shall be deemed to have been served upon

Defendant at the time of its execution by the Court.

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4.

The Court finds there is no just reason for delay in entering this

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Permanent Injunction against Defendant, and, pursuant to Rule 54(a) of the

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Federal Rules of Civil Procedure, the Court directs immediate entry of this

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Permanent Injunction against Defendant.

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5.

NO APPEALS AND CONTINUING JURISDICTION.

No

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appeals shall be taken from this Permanent Injunction, and the parties waive all

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rights to appeal. This Court expressly retains jurisdiction over this matter to

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enforce any violation of the terms of this Permanent Injunction by Defendant.

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6.

NO FEES AND COSTS. Each party shall bear their own attorneys’

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fees and costs incurred in this matter.

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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DISMISSAL.

Upon entry of this Permanent Injunction against

Defendant, the case shall be dismissed as to Defendant, with prejudice.

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IT IS SO ORDERED, ADJUDICATED and DECREED this 11th day of
May, 2017.

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_________________________________
HON. ANDRÉ BIROTTE JR.
District Court Judge of the United States
Central District of California

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL