BMW of North America LLC et al v. AIP Electronics, LLC et al

Filing 9

PERMANENT INJUNCTION and DISMISSAL WITH PREJUDICE, signed by Chief Judge Lawrence J. O'Neill on 3/24/17. (CASE CLOSED)(Hellings, J)

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UNITED STATES DISTRICT COURT
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EASTERN DISTRICT OF CALIFORNIA
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BMW OF NORTH AMERICA, LLC, a
Delaware Limited Liability Company, and
BAYERISCHE MOTOREN WERKE AG, a
German Corporation,
Plaintiff,

Case No.: 1:17-cv-00147-LJO-SKO
PERMANENT INJUNCTION AND
DISMISSAL WITH PREJUDICE
HON. LAWRENCE J. O’NEILL

v.
AIP ELECTRONICS, LLC, a California
Limited Liability Company d/b/a ALL
IGNITION and OEM PARTS GURU; JATIN
PATEL, an Individual; MITUL PATEL, an
Individual; and DOES 1-10, inclusive,
Defendants.

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

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Defendants and Dismissal (“Stipulation”) by and between BMW OF NORTH AMERICA, LLC,

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and BAYERISCHE MOTOREN WERKE AG (collectively “BMW”), and Defendants AIP

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ELECTRONICS, LLC, d/b/a ALL IGNITION and OEM PARTS GURU, JATIN PATEL, and

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MITUL PATEL (collectively “Defendants”), filed concurrently herewith, hereby ORDERS,
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ADJUDICATES and DECREES that a permanent injunction shall be and is hereby entered

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against Defendant in the above-referenced matter as follows:

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1.

PERMANENT INJUNCTION. Defendants and any person or entity acting in

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concert with, or at the direction of any of the Defendants, including any and all agents, servants,

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employees, partners, assignees, distributors, suppliers, resellers and any others over which any

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of the Defendants may exercise control, are hereby restrained and enjoined, pursuant to 15

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U.S.C. § 1116, from engaging in, directly or indirectly, or authorizing or assisting any third

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party to engage in, any of the following activities in the United States and throughout the world:

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a.

copying, manufacturing, purchasing, importing, exporting, marketing,

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selling, offering for sale, distributing or dealing in any product or service that uses, or otherwise

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making any use of, any of BMW’s trademarks, including but not limited to, the BMW® word

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and design marks, the M® word and design marks, the MINI® word and design marks, and/or

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any intellectual property that is confusingly or substantially similar to, or that constitutes a

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colorable imitation of, any of BMW’s trademarks (collectively “BMW’s Trademarks”), whether

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such use is as, on, in or in connection with any trademark, service mark, trade name, logo,

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

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

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or otherwise;

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b.

performing or allowing others employed by, under control of, or

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representing Defendant, or under his control, to perform any act or thing which is likely to

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injure BMW or any of BMW’s Trademarks, specifically including but not limited to the

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BMW®, M®, and MINI® marks;

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c.

engaging in any acts of federal and/or state trademark infringement, false

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designation of origin, unfair competition, dilution, or other act which would tend damage or

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injure BMW;

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d.

owning, possessing, and/or controlling any Internet domain name that

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includes any of BMW’s Trademarks, including but not limited to BMW®, M®, and MINI®;

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and
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e.

using any website that includes any unauthorized depictions of BMW’s

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Trademarks, including but not limited to the BMW® word and design marks, the M® word and

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design marks and the MINI® word and design marks.

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2.

Defendants are immediately ordered to deliver to counsel for BMW for

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destruction all unauthorized products, including counterfeit BMW®, M®-, MINI®-branded

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products, apparel, stickers, labels, signs, prints, packages, wrappers, receptacles and/or

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advertisements relating thereto in their possession or under their control bearing any of BMW’s

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Trademarks or any simulation, reproduction, counterfeit, copy or colorable imitations thereof,

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and all plates, molds, heat transfers, screens, matrices and other means of making the same, to

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the extent that any of these items are in Defendants’ possession.

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3.

This Permanent Injunction shall be deemed to have been served upon Defendants

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 Permanent

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Injunction, and, pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court

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directs immediate entry of this Permanent Injunction against Defendants.

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5.

Defendants will be making an agreed-upon payment to BMW, as more

particularly described in a separate Confidential Settlement Agreement.

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6.

NO APPEALS AND CONTINUING JURISDICTION. No appeals shall be

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taken from this Permanent Injunction, and the parties waive all rights to appeal. This Court

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expressly retains jurisdiction over this matter to enforce any violation of the terms of this

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Permanent Injunction by Defendants or any breach of the underlying Settlement Agreement.

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7.

NO FEES AND COSTS. BMW and Defendants shall bear their own attorneys’

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fees and costs incurred in this matter.

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//

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//

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//

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//

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//
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8.

DISMISSAL WITH PREJUDICE. Upon entry of this Permanent Injunction

against Defendants, this case shall be dismissed with prejudice.

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IT IS SO ORDERED.
Dated:

March 24, 2017

/s/ Lawrence J. O’Neill _____
UNITED STATES CHIEF DISTRICT JUDGE

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