India v. Deccan Foods LLC, Civil Action No. 14-5600 (JMV)

CourtUnited States District Courts. 3th Circuit. United States District Courts. 3th Circuit. District of New Jersey
Writing for the CourtJohn Michael Vazquez, U.S.D.J.
PartiesKARACHI BAKERY INDIA, Plaintiff, v. DECCAN FOODS LLC, KIRAN KUMAR POLA, individually and on behalf of Deccan Foods LLC, and MANOJ RAMNANI Defendants.
Docket NumberCivil Action No. 14-5600 (JMV)
Decision Date31 October 2017

and on behalf of Deccan Foods LLC, and MANOJ RAMNANI Defendants.

Civil Action No. 14-5600 (JMV)


October 31, 2017

Not for Publication


John Michael Vazquez, U.S.D.J.

This case concerns an alleged improper trademark registration and a subsequent assignment of the trademark. Currently pending before the Court is the renewed motion to dismiss Plaintiff's First Amended Complaint by Defendant Deccan Foods, LLC ("Deccan Foods") and Kiran Kumar Pola ("Pola") (collectively, the "Deccan Defendants"). D.E. 64. Plaintiff Karachi Bakery India ("Plaintiff") filed a brief in opposition, D.E. 69, to which the Deccan Defendants replied, D.E. 70. The Court reviewed the submissions in support and in opposition,1 and

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considered the motion without oral argument pursuant to Fed. R. Civ. P. 78(b) and L. Civ. R. 78.1(b). For the reasons stated below, Defendants' motion to dismiss Counts I, II, and III is DENIED and Defendants' motion to dismiss Counts IV, V, VI and VII is GRANTED.


This dispute arises from a trademark registered by the Deccan Defendants and subsequently transferred to Defendant Manoj Ramnani ("Ramnani"). Plaintiff alleges that is has been using the name "Karachi Bakery" internationally since 1953 and in the United States since 2007. Plaintiff further alleges that in 2012 and 2013, the Deccan Defendants unlawfully applied for and registered the "Karachi Bakery" word mark using Plaintiff's packaging label. The Deccan Defendants then transferred the trademark to Defendant Ramnani.

Plaintiff is a partnership organized under the laws of India and its principal place of business is in Banjara Hills, Hyderabad, India. FAC at ¶ 6. Deccan Foods is an Arizona limited liability company with its principal place of business in Phoenix. Id. at ¶ 8. Pola is a resident of India and lives in Phoenix. Id. at ¶ 10. Pola is a majority owner of Deccan Foods as well as Deccan Grainz Private Limited ("Deccan Grainz"). Id. at ¶ 10. Ramnani is a citizen and resident of India. Id. at ¶ 14. Defendant Ramnani is also a minority partner in Plaintiff. Id. at ¶ 15.

Plaintiff claims that it has been producing and selling baked goods in India under the Karachi Bakery mark since 1953. Id. at ¶ 18. In 2004, one of Plaintiff's partners and representatives submitted a trademark application for "Karachi Bakery" to India's Trademark Registry. Id. at ¶ 19. In 2009, Plaintiff received a certificate of registration for the mark. Id. at ¶

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20. Plaintiff has submitted fifteen additional trademarks for "Karachi Bakery" that have been approved, but not formally registered, by India's Trade Marks Registry, id. at ¶ 21, and also has nine additional trademark applications pending, id. at ¶ 22. Plaintiff has a registration in the United Kingdom for the "Karachi Bakery" mark and has pending applications in a number of other countries. Id. at ¶ 23.

Plaintiff claims that in at least as early as 2007, it began to export baked goods with the Karachi Bakery mark into the United States through Karachi Corporation and Sai Baba, Inc. Id. at ¶ 24. Karachi Corporation is Plaintiff's wholesale and trading division, while Sai Baba is Plaintiff's manufacturing division. Id. Plaintiff states that beginning at least as early as November 2009 through late 2012, Plaintiff exported its Karachi Bakery goods into the United States using a number of third-party importers. Id. at ¶ 25. Since least as early as December 2012 until the present, Plaintiff indicates that it exported and sold its Karachi Bakery goods into the United States using Sairam NJ. Sairam's principal place of business in Iselin, New Jersey. Id. at ¶ 26.

Beginning on September 6, 2012, Plaintiff sold Karachi Bakery brand goods to Deccan Grainz in India. Id. at ¶ 27. Plaintiff claims that at approximately the same time, Defendant Pola began importing these goods into the United States from Deccan Grainz to Deccan Foods. Id. at ¶¶ 27, 31. Plaintiff continues that these goods were packaged with Plaintiff's Karachi Bakery mark and that neither Defendant Deccan Foods, Defendant Pola, nor Deccan Grainz had an exclusive right to sell Plaintiff's products under the mark. Id. at ¶¶ 28-29.

Plaintiff asserts that on July 31, 2012, the Deccan Defendants filed an application ("Application") in the name of Pola and Deccan Foods with the United States Patent and Trademark Office ("USPTO") to register the word mark "Karachi Bakery." Id. at ¶ 30. According to Plaintiff, the Application identified "Biscuits; Cakes; Chocolate; Sweets" as the goods relating

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to mark. Id. Plaintiff alleges that the Deccan Defendants submitted copies of Plaintiff's packaging label as proof of the Deccan Defendants' use of the mark in commerce. Id. at ¶ 33. Pola declared in the Application that "to the best of his [] knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce[.]" Id. at ¶ 37. Plaintiff contends that this declaration was false. Plaintiff explains that the Deccan Defendants knew that neither Pola nor Deccan Foods were the rightful owners of the Karachi Bakery mark, id. at ¶ 35, and that Plaintiff was entitled to use the mark, id. at ¶ 36.

The USPTO approved the Application. On May 7, 2013, the Karachi Bakery mark was registered on behalf of the Deccan Defendants as U.S. Registration No. 4,331,059. Id. at ¶ 38.

In May 2014, Plaintiff first became aware of the registered mark and Application when the Deccan Defendants' counsel sent Plaintiff's authorized U.S. importer, Sairam, a "cease and desist" letter. Id. at ¶ 39. Plaintiff thereafter stopped supplying Deccan Foods and Pola with Plaintiff's goods. Id. at ¶ 43.

On February 25, 2015, the Deccan Defendants executed a document purported to transfer the Karachi Bakery mark, including its U.S. Registration, to Defendant Ramnani. Id. at ¶ 44. The trademark assignment was recorded with the USPTO on March 31, 2015, id. at ¶ 46, and on April 15, 2015, the Deccan Defendants notified Plaintiff of the assignment, id. at ¶ 49. After the assignment, Plaintiff alleges that Ramnani began supplying the Deccan Defendants with goods with Plaintiff's mark. Id. at ¶ 47.


On September 9, 2014, Plaintiff filed a Complaint against the Deccan Defendants. D.E. 1. On January 7, 2015, the Deccan Defendants submitted an Answer. D.E. 10. As noted, shortly thereafter, the Deccan Defendants assigned the mark to Defendant Ramnani. On December 23,

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2015, Plaintiff filed its First Amended Complaint ("FAC") also naming Ramnani as a defendant and adding two additional claims. D.E. 35. Thereafter, the Deccan Defendants filed a motion to dismiss. On April 6, 2016, the Court denied the motion without prejudice and ordered limited jurisdictional discovery concerning the assignment of the trademark from the Deccan Defendants to Defendant Ramnani. D.E. 49. Following the discovery, the Deccan Defendants renewed their motion to dismiss pursuant to Rules 12(b)(6) and 12(c) of the Federal Rules of Civil Procedure. D.E. 64.


Rule 12(b)(6) permits a motion to dismiss for "failure to state a claim upon which relief can be granted[.]" For a complaint to survive dismissal under the rule, it must contain sufficient factual matter to state a claim that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. Further, a plaintiff must "allege sufficient facts to raise a reasonable expectation that discovery will uncover proof of her claims." Connelly v. Lane Const. Corp., 809 F.3d 780, 789 (3d Cir. 2016).

In evaluating the sufficiency of a complaint, district courts must separate the factual and legal elements. Fowler v. UPMC Shadyside, 578 F.3d 203, 210-211 (3d Cir. 2009). Restatements of the elements of a claim are legal conclusions, and therefore, not entitled to a presumption of truth. Burtch v. Milberg Factors, Inc., 662 F.3d 212, 224 (3d Cir. 2011). A court, however, "must accept all of the complaint's well-pleaded facts as true." Fowler, 578 F.3d at 210. Even if plausibly pled, however, a complaint will not withstand a motion to dismiss if the facts alleged do

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not state "a legally cognizable cause of action." Turner v. J.P. Morgan Chase & Co., No. 14-7148, 2015 WL 12826480, at *2 (D.N.J. Jan. 23, 2015).

Under Rule 12(c), "[a]fter the pleadings are closed but within such time as not to delay the trial, any party may move for judgment on the pleadings." "The pleadings are 'closed' after the complaint and answer are filed, along with any reply to additional claims asserted in the answer. Horizon Healthcare Servs., Inc. v. Allied Nat. Inc., 2007 WL 1101435, at *3 (D.N.J. Apr. 10, 2007). "Under Rule 12(c), judgment will not be granted unless the movant clearly establishes that no material issue of fact remains to be resolved and that he is entitled to judgment as a matter of law." Bayer Chemicals Corp. v. Albermarle Corp., 171 Fed. Appx. 392, 397 (3d Cir. Mar. 21, 2006) (quoting Jablonski v. Pan Am. World Airways, Inc., 863 F.2d 289, 290 (3d Cir. 1988) (internal citations and quotations omitted)).

"In reviewing a decision granting a Rule 12(c) motion, [a court] must view the facts presented in the pleadings and the inferences to be drawn therefrom in the light most favorable to the nonmoving party." Szczurek v. Prof'l Mgmt. Inc., 627 F. App'x 57, 60 (3d Cir. 2015) (internal citations and quotations omitted); see Muhammad v. Sarkos, 2014 WL 4418059, at *1 (D.N.J. Sept. 8, 2014) ("Where a defendant's motion is one for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c),...

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