Multi Access Ltd. v. Guangzhou Baiyunshan Pharm. Holdings Co.
| Docket Number | 20-cv-7397 (LJL) |
| Decision Date | 21 August 2023 |
| Parties | MULTI ACCESS LIMITED, Plaintiff, v. GUANGZHOU BAIYUNSHAN PHARMACEUTICAL HOLDINGS CO., LTD. AKA GUANGZHOU BAIYUNSHAN PHARMACEUTICAL HOLDING CO., LTD.; WLJ AMERICA CO. INC.; GUANGZHOU WANGLAOJI GREAT HEALTH CO., LTD.; GUANGZHOU WANG LAO JI GREAT HEALTH INDUSTRY CO., LTD. AKA WLJ GREAT HEALTH INDUSTRY CO., LTD.; GUANGZHOU WANGLAOJI PHARMACEUTICAL CO., LTD.; GUANGZHOU WANG LAO JI GREAT HEALTH ENTERPRISE DEVELOPMENT CO., LTD. AKA WLJ GREAT HEALTH ENTERPRISES DEVELOPMENT CO., LTD.; GUANGZHOU PHARMACEUTICAL HOLDINGS LTD. AKA GUANGZHOU PHARMACEUTICAL GROUP; GUANGZHOU WANG LAO JI GREAT HEALTH ENTERPRISE CO., LTD.; GUANGZHOU WANGLAOJI HEALTH INDUSTRY CO., LTD., and TRISTAR FOOD WHOLESALE CO. INC., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff Multi Access Limited's (“MAL” or “Plaintiff') brings an action alleging, inter alia, that Defendants Guangzhou Baiyunshan Pharmaceutical Holdings Co., Ltd. (“GBP”), its direct and indirect subsidiaries, and affiliates, have unlawfully copied and misappropriated MAL's trademarks, trade dress, and copyright with respect to its canned herbal tea beverage bearing the Chinese characters 王老吉 (“Wong Lo Kat”).[1] Dkt. No. 77 ¶¶ 2-3.[2]
The operative complaint alleges thirteen claims for: (1) trademark infringement of one of Plaintiff's marks (the “‘908 Registration”); (2) trademark infringement of Plaintiff's “Red Label” design mark; (3) federal trade dress infringement; (4) federal unfair competition and false designation of origin (5) federal false advertising; (6) reverse confusion; (7) copyright infringement; (8) trademark infringement and unfair competition in violation of New York common law; (9) violation of the New York anti-dilution statute; (10) unjust enrichment; (11) cancellation of one of defendant GBP's marks (the “‘210 Registration”) for likelihood of confusion; (12) cancellation of the ‘210 Registration for lack of bona fide intent to use and (13) trademark cancellation for naked licensing. Id. ¶¶ 105-206.
Three of the Defendants-GBP, WLJ (America) Co. Inc (“WLJ”), and Tristar Food Wholesale Co. Inc. (“Tristar,” and together with WLJ and GBP, “Moving Defendants”)- together move to dismiss Plaintiff's operative complaint pursuant to Federal Rules of Civil Procedure 12(b)(2), (6), and (7). Dkt. No. 141. For the following reasons, the motion to dismiss is granted solely as to Defendant GBP.
The following facts are drawn from the amended complaint, Dkt No. 77 (“Amended Complaint”), and the materials submitted in connection with the motion to dismiss and are construed in the light most favorable to MAL.
Plaintiff MAL is the successor in interest to the U.S. rights formerly held by companies owned by the descendants of Wong Lo Kat (王老吉), the creator of a secret formula for a famous herbal tea sold under his name since the 1800s in the Guangdong Province of China. Id. ¶ 18. In or about 1897, Wong Lo Kat's son, Wong Kwai Fa, and grandson, Wong Heng Yu, established operations in Hong Kong, where their business remains to this day. Id. ¶ 19. In or about 1913, a business separation agreement was reached among Wong Lo Kat's descendants, including those operating the business in Mainland China, concerning the operations in Hong Kong and Mainland China. Id. ¶ 20. Since 1913, the Hong Kong business has been controlled by the son, Wong Kwai Fa, and the grandson, Wong Heng Yu, and their family and successors, separate and apart from the business in Mainland China. Id. The rights in and to the Wong Lo Kat brand in jurisdictions outside of Mainland China, including the United States, remained with Wong Heng Yu and his successors. Id. ¶ 21.
MAL promotes, offers for sale, and sells various herbal tea-related beverages and products containing the secret formula in the United States under the Wong Lo Kat brand (the “Wong Lo Kat Tea Products”). Id. ¶ 26. Wong Lo Kat branded products have been continuously sold in the United States since at least 1897. Id. ¶ 22.
Among MAL's most popular and profitable products are its herbal teas sold in a red can (“Wong Lo Kat Red Can”). Id. ¶ 29. The design of the artwork and graphics comprising the can was completed in 1998 and has been used on the Wong Lo Kat Red Can to the present day. Id. ¶ 30. The Wong Lo Kat Red Can appears as follows:
Image Omitted
Id. ¶ 29. The artwork and graphic design on the Wong Lo Kat Red Can is an original work of authorship created and protected under the copyright laws of Hong Kong SAR (the “Wong Lo Kat Work”). Id. ¶ 44. MAL is the owner of the U.S. rights in and to the Wong Lo Kat Work. Id. ¶ 45.
MAL is also the owner of a design mark, U.S. Reg. No. 4657844, which was filed on the basis of foreign registration (“Red Label Design Mark”). Id. ¶ 32; Dkt. No. 77-1. The description of the Red Label Design Mark in its registration states: “The color(s) red, black and brown is/are claimed as a feature of the mark.” Dkt. No. 77 ¶ 33; Dkt. No. 77-1. “The mark consists of an arrangement of bands of various widths of brown, red and black in the following order from top to bottom: brown, red, black, red, black, red, black and red.” Dkt. No. 77 ¶ 33; Dkt. No. 77-1. The design mark appears as follows:
Image Omitted
Dkt. No. 77 ¶ 32. MAL has used the Red Label Design Mark in United States commerce since at least as early as 2007. Id. ¶ 34. The label design of the Wong Lo Kat Red Can features the elements enumerated in the Red Label Design Mark, including an arrangement of bands of various widths of colors in the order previously described. Id. ¶ 35.
MAL is also the owner of a family of 王老吉 (Wong Lo Kat)-formative trademarks (collectively, the “Wong Lo Kat Trademarks”). Id. ¶ 46. MAL's federally registered mark, U.S. Reg. No. 2005908 or the ‘908 Registration, claims first use anywhere at least as early as 1897, and first use in United States commerce at least as early as January 1993, in connection with “herbal tea for food purposes; mixture of tea and herbal tea for food purposes” in International Class 30. Id. ¶ 47. This trademark was registered on October 8, 1996, is incontestable, and has been renewed. Id.; Dkt. No. 77-2. The registered mark appears as follows:
Image Omitted
Dkt. No. 77 ¶ 47. The ‘908 Registration states that “[t]he Chinese characters in the mark transliterate to ‘wang lao ji,' which mean ‘wang,' ‘old,' and ‘lucky' respectively in English, but when they are used together, they have no meaning.” Id. ¶ 48.
On July 12, 2016, MAL filed multiple applications to register the WONG LO KAT mark in vertical form with the United States Patent and Trademark Office (“USPTO”). Id. ¶ 52.
Those applications were assigned U.S. Application Serial Nos. 87101038 (“‘038 Application”), 87100961 (“‘961 Application”), 87100809 (“‘809 Application”), and 87100791 (“‘791 Application”) (collectively, the “MAL Applications”). Id. The mark in vertical form appears as follows:
Image Omitted
Id.; see also Dkt. Nos. 77-3, 77-4, 77-5, 77-6. Each of the MAL Applications provide that “[t]he non-Latin characters in the mark transliterate to ‘Wang Lao Ji' and this has no meaning in a foreign language.” Dkt. No. 77 ¶ 54. The ‘961 Application claims first use anywhere at least as early as 1897 and first use in United States commerce since at least as early as March 23, 2007. Id. ¶ 55. The applications were filed based on MAL's bona fide intent to use the mark in connection with Chinese medicinal products in International Class 5 (the ‘961 Application), tea and herbal tea related products in International Class 30 (the ‘038 Application), beverages and preparations for making beverages in International Class 32 (the ‘809 Application), and tea-based confectionary in International Class 32 (the ‘791 Application). Id. ¶¶ 55-58.
Since at least as early 2007, the Wong Lo Kat Red Can has continuously featured a combination of distinctive source-identifying elements, including: (1) the Chinese characters 王老吉 appearing in the color yellow and shadowed in black positioned vertically[3] in the center of the can's principal display panel, (2) a red background, (3) a thicker black or dark brown band followed by a thinner black or dark brown band at the top of the can, and (4) a thinner black band followed by a thicker black band at the bottom of the can, all of which combine to form its trade dress (the “Wong Lo Kat Trade Dress”). Id. ¶ 36. Since its release in 2007, MAL has sold more than 17 million units of herbal tea in a can bearing the Red Label Design Mark and the Wong Lo Kat Trade Dress in the United States. Id. ¶ 37.
Defendants GBP and its subsidiaries and affiliates are alleged to have inherited the business of the Mainland China members of the Wong Lo Kat family. As such, GBP is the owner of the registered marks for Wong Lo Kat in the People's Republic of China (“GBP's Registered Marks”). GBP came into possession of GBP's Registered Marks through a chain of transactions. In or about the 1950s, when the Chinese government began seizing private companies and all associated assets, the Wong Lo Kat business that had remained in the People's Republic of China (“PRC”) became a state-owned operation (the “PRC Enterprise”). Id. ¶ 61. In or about 1988 and 1992, the PRC Enterprise applied for registration of a device mark consisting of the Chinese characters for Wong Lo Kat in the People's Republic of China. Id. ¶ 62. The PRC Enterprise subsequently transferred the People's Republic of China Wong Lo Kat registrations to GPHL in or about 1997. Id. GPHL is a state-owned enterprise established by, and under the administration...
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