Haru Holding Corp. v. Kydia Incorporated et al

Filing 10

CONSENT JUDGMENT in favor of Haru Holding Corp. against Haru Ginger Restuarant, Inc. SO ORDERED that this action is hereby dismissed without costs or attorney's fees as to Haru Ginger Restaurant, Inc. Haru Ginger Restuarant, Inc. (a New York Corporation) terminated. Ordered by Judge Sandra J. Feuerstein on 1/29/2014. (Florio, Lisa)

D/F

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
HARU tlOLDING CORP.,
Plaintiff,

Civil Action No. 13-C[V-6544 (SJF)CAR.If I LED

vs.

CQNSENT J!JDGMENT

·

KYDIA INCORPORATED and HARU
GINGER RESTAURANT. INC.

.
IN CLERK'S OFFICE
US DISTRICT COURTED NV

*

Defendant.

JA:~

2 g 2014

LONG ISLAND OFFICE

'l'J'JJS CAUSE came before the Court on the application of Pla.intiff HARU HOlDING
CORPORATION (hereinafter ''Plaintiff' or "HHC") and Defendant HARU GINGER
RESTAURANT, INC. (hereinafter "Defendant'").

Defendant's principal WEN XUN LI and his

brother WEN QING U have voluntarily agreed to join in this action and be bound by the terms of

this order. Defendant, WEN XUN LI and his brother WEN QING U shall collectively be referred to
""the "HARU GINGER Defendants." HHC and the HARU GINGER Defendants shall collectively
be referred to

as ''Parties." The Parties have jointly moved for, and have consented to, entry of a

Consent Judgment ("Judgment") including injunctive relief in the form herein set forth. NOW

THEREFORE, IT IS HEREBY STIPULATED AND AGREED, ORDERED",ADJUDGEDowd
DECREED as follows:
1.

On November 26, 2013, HHC filed a Complaint against Defendant and co-defendant

Kydia Inc. seeking a permanent injunction and other relief for violation of 15 U.S.C. §§ 1114 and
1125(a) and New York General Business Law §§ 360-K, 360-L and the common laws.
2.

Defendant admits !hat this Court has subject matter jurisdiction over the action and

admits and consents to personal jurisdiction over Defendant and entry of this final judgment.
3.

WEN XUN U and WEN QING Lieach individually admit that this Court has subject

matter jurisdiction over the action and admit and consent to personal jurisdiction over each of them
1

*

r

'

Civil Action No. 13·CIV-6544

and entry of this final judgment.
4.

HARU GINGER Defendants acknowledge and admit HHC bas continuously and

extensively used the trademark HARU, with and without design clements, in commerce since as

early as 1999 in connection with its restaurant, catering, and related goods and services. HHC's
restaurants serve traditional Japanese and inventive Japanese-fusion cuisine in a trendy ambiance.
IDIC also provides delivery and catering services, private rooms and lounges, outdoor dining spaces
and a bar. CUITently, HHC operates seven (7) restaurants in New York and Boston under its HARU
trademarks.

S.

HARU GINGER Defendants acknowledge and admit that in addition to HHC's

common law trademark rights, HHC is also the owner of several valid and subsisting federal
trademark registrations for the trademark HARU as well as other design marks that include the word
HARU, including the following (individually and collectively referred to as the "HARU®
Registrations''):

2,546,193

Restaurant
(Class 043).

services

services

HARU

Restaurant, bar, and
catering services (Class
043).

4,125,100

2

'

Civil Action No. 13-CN-6544
6.

HARU GINGER Defendants acknowledge and ag.ree that HHC is also the owner of a

valid and subsisting New York Trademark Regisn:ation No. S20853 for the mark HARU and
Design, registered in connection with ''restaurant services" in Class 042 (individually, the "New

York Registration" and collectively, as part of the "liARU® Registrations"). Collectively, HHC's
common law rights and its rights to the marks in the HARU® Registrations are refemlli to as the
"HARU Trademarks."
7.

HARU GINGER Defendants acknowledge and admit that the HARU® Registrations

are valid, s~~lstiog, and ovidence HHC's exclusive rights and ownership to the HARU Trademarks.

8.

HARU GINGER Defendants acknowledge andadmitthatonAugust26, 2011, WEN

XUN LI formed and incorporated HARU GINGER RESTAURANT, INC. in the State ofNew York,
having a busino:~ss address of7308 3rd Avenue, Brooklyn. New York, 11209 dlb/aHARU GINGER.
9.

HARU GINGER Defendants acknowledge and admit that since 2011, they bave

owned and operated a restaurant at 7308 3"' Avenue, Brooklyn, New York 11209 using the
trademarks HARU GINGER and/or HARU GINGER BROOKLYN, advertising and promoting its
competing rcstaurant,lricluding through the internet at hamginQef.com and barugingerhrogklvn.com.
10.

1udgment is hereby entered in favor of HHC and against Defendant HARU GINGER

its officers WEN XUN LI, and WEN QIN'G Ll, each individually, as follows:
DefendantHARU GINGER RESTAURANT, INC., its principals, officers, general partners,
limited partners, shareholders, a.nd owners, employees, agents, representatives, parents, affiliates,
divisions, subsidiaries, successors, vendees, transferees, and/or assigns, including WBN XUN U and

3

r

'

Civil Action No. 13-CIV-6544
WEN QJNO LL individually and collectively, on a worldwide basis, directly and indirectly, are
immediately and pe!'lllanently enjoined from, directly and indirectly:
(i)

registering, attempting to register, renewing, purchasing, or acqumng any
tradelll.8tk rights consisting of, in whole or in part, the word HARU, any of the
HARU® Trademarks, and/or any trademarks confusingly similar thereto;

(ii)

registering, attempting to register, renewing, purchasing, or acquiring my domain
names consisting of, in whole or in part, the word HARU, any of the HARU®
Trademarks, and/or any trademarks confusingly similar thereto;

(iii)

identifying, passing off, or creating the false association, affiliation or association
with HHC or the HARU® Trademarks, and if asked, shall expressly deny same;

(iv)

using, advertising, promoting, selling or offering to sell, or authorizing others to
do so, in connection with any goods/services, the word HARU, the HARU®
TradeJIIlU'ks, and/or any other words, phrases, or symbols that are confusingly
similar thereto; and

(v)

using, in whole or in part, the word HARU, any of tbe HARU® Trademarks,
and/or any other words confusingly similar thereto: (a) as a coqxnate name, trade
name, trademark, service mark, collective mark, certification nwk, brand name,
logo, domain=· website, keywords, in metab.gs, or any other means of source
identification of any nature whatsoever, either alone or in combination with other
words or symbols, (b) in advertising materials, promotional materials, statione.ry,
packaging, displays., signs of any nature, instructions, labels and other printed
materials of any nature whatsoever, (c) in listings of any nature, including, but
not limited to, business listing~. Internet listings, phone and trade association
listings, (d) in domain names and Internet text material of any nature whatsoever,
including, but not limited to, metatags, keywords, web sites and any other source
code or visible display on the Internet.

Notwithstanding tbe foregoing, up to and including Febi"Dary 27, 2014, Defendant HARU
GINGER RESTAURANT, INC. shall be able to continue uslng any currently-existing advertising
materials, promotional materials, flyers, stationery, packaging, menus, billboards, napkins, table
displays, signs of any nature, instructions, labels, busmess cards and other materials, which display,
in whole or In part, tbe word HARU, any of the HARU® Trademarks, HARU GINGER
4

..

..

Civil Action No. 13-CIV-6544

RESTAURANT, INC., HARU GINGER, and/or HARU GINGER BROOKLYN. By no later than

Mardi 1, 2014, HARU GINGER shall destroy any and all such materials remaining in HARU
GINGER's possession, custody, and control on February 27, 2014, and shall certify such destruction
in a written letter to HHC setting forth in. detail the materials destroyed, the date destroyed, and the
manner of destruction.
11.

The undersigned represent that the respective parties have bad the opportunity to

engage independent legal counsel or have obtained the advice of counsel and are consenting and
agreeing to all of the terms of this Judgment freely and voluntarily.
12.

The Clerk of the Court shall enter this Judgment promptly on the docket of the Court

pursuant to Rule 58 of the Federal Rules of Civil Procedure and this action is hereby dismissed
without cost& or attorney's fees, u•·a tais €omt shail retllill eMel118ioejllriadictlon ooq tltio aeti011 for ~
.Qis('ll!teS lll'ieillg eat gf 1M selllll!l!ellt &1!1'8_,1 •xmJted ~·tile Vulic1

a~

-to

9f lllis

Han.t Glv1~er ReSfuL.tran-f: lnc.

5

J"~t

~

Civil Action No. 13-Crv-6544

IN WITNESS WHEREOF, the Parties hereto have caused this Judgment to be executed on

the dates set forth below.
HARU HOLDING CORP.

/~ .

"'"~W Jzrn,,_
f

By: (

Title.

Date:

~

I.

'( J-C

HARU GINGER RESTAURANT, INC.
'Br'xx Name
Wen Xun Li
,Signature
.,.,.,.., VI
J '
J¥l'IIR'I!!Uii!W6~
W<7• c""t>t-1-t.&:·r

Title:

Date:

/i.

pnrl"5 idefif
I

I '5 I
I

'l-r11lf.

WENXUNU

we. 'h >6c-t>t- l (
I ( (3/

Date:

']_(I I

fl.

WENQINGLI

;tJ J.~~~ v__,J_,
SO ORDERED
This

2'1 day ofJanuru.y, 2014.

s/ Sandra J. Feuerstein
1

6

HonorabGi' Saudra J. Feuerstein
United States District Judge