Shenzhen Kinwong Elec. Co. v. Kukreja

• Citation: 574 F.Supp.3d 1191
• Decision Date: 08 December 2021
• Docket Number: CASE NO. 18-61550-CIV-ALTMAN/Hunt
• Parties: SHENZHEN KINWONG ELECTRONIC CO., LTD., et al., Plaintiffs, v. Rishi KUKREJA, et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

574 F.Supp.3d 1191

SHENZHEN KINWONG ELECTRONIC CO., LTD., et al., Plaintiffs,

v.Rishi KUKREJA, et al., Defendants.

CASE NO. 18-61550-CIV-ALTMAN/Hunt

United States District Court, S.D. Florida.

Signed December 8, 2021

Filed December 9, 2021

Angela Ashley Korge, Mark Allan Salky, David A. Coulson, James Evans Gillenwater, Greenberg Traurig, P.A., Miami, FL, Steven J. Wadyka, Jr., Pro Hac Vice, Greenberg Traurig, LLP, Washington, DC, for Plaintiffs Shenzhen Kinwong Electronic Co., Ltd., Kinwong Electronic (Hong Kong) Limited.

Chauncey David Cole, IV, Chauncey Cole, PA, Jorge Tadeo Espinosa, Francesca Russo-Di Staulo, Robert Ralph Jimenez, GrayRobinson, P.A., Miami, FL, for Defendants Rishi Kukreja, Kinwong, LLC, Circuitronix, LLC.

OMNIBUS ORDER

ROY K. ALTMAN, UNITED STATES DISTRICT JUDGE

The Plaintiffs—Shenzhen Kinwong Electronic Co., Ltd., and Kinwong Electronic (Hong Kong) Ltd.—manufacture Printed Circuit Boards ("PCBs"). The Defendants—Rishi Kukreja; Kinwong LLC; and Circuitronix LLC—are in the business of distributing PCBs. The parties—once business partners—have chased each other in and out of courtrooms these past few years. In this case, they challenge one another's claims to the KINWONG mark. After protracted—and, sometimes, acrimonious—litigation, the Defendants moved to dismiss the Plaintiffs’ trademark claims. The Plaintiffs, in turn, moved to dismiss Count IV of the Defendants’ Amended Counterclaim.¹ And both sides filed cross-motions for summary judgment. This Order follows.

THE FACTS

I. The Parties

Shenzhen Kinwong Electronic Co., Ltd. ("Shenzhen Kinwong"), one of the Plaintiffs, manufactures PCBs—devices used to connect electronic components in all but the simplest of electronic machines—in China and sells them around the world. See Joint Statement of Undisputed Facts ("JSUF") [ECF No. 183] ¶¶ 1–2; Plaintiffs’ Statement of Material Facts ("Plaintiffs’ SMF") [ECF No. 185] ¶ 1.² Shenzhen Kinwong has owned the Chinese trademark registration for the KINWONG mark since 1999. See 1999 Kinwong Trademark Registration Certificate [ECF No. 186-9]. That same year, Shenzhen Kinwong—using its trademarks—began selling its PCBs to clients in the United States. See Deposition of Kent Wang ("Wang Depo.") [ECF No. 186-6] at 34:21–24 ("So we started to use our [KINWONG] trademarks since 1999, with Emerson in U.S. to do business."). And, since at least 2003, Shenzhen Kinwong has advertised its products on a globally accessible website, www.kinwong.com. See Plaintiffs’ SMF ¶ 3.³ The other Plaintiff—Kinwong Electronic (Hong Kong) Ltd. ("Kinwong HK")—is a subsidiary of Shenzhen Kinwong. See Defendants’ Statement of Material Facts ("Defendants’ SMF") [ECF No. 180] ¶ 22.

The Defendants—Circuitronix LLC ("CTX") and Kinwong LLC—are both Florida-based companies founded and owned by Rishi Kukreja (another Defendant) in 2002 and 2013, respectively. JSUF ¶¶ 3–5, 18, 23. Neither CTX nor Kinwong LLC has ever manufactured PCBs. JSUF ¶¶ 5, 23. Since its founding in 2013, Kinwong LLC has functioned as a holding company—with Kukreja as its sole owner. Id. ¶¶ 19, 23. Kinwong LLC has never sold any products—not PCBs or anything else. Id. ¶ 23. Meanwhile, CTX sells PCBs, but it does not manufacture them. Id. ¶¶ 5–6. CTX makes its money by acting as a middleman, purchasing PCBs from Chinese manufacturers—like Shenzhen Kinwong—and reselling them to end customers who use them in their products. See Plaintiffs’ SMF ¶ 9; Defendants’ Objections to Plaintiffs’ SMF ("Defendants’ Objections") [ECF No. 215] ¶ 9 ("Admitted[.]"). So, CTX and Shenzhen Kinwong would seem to be a perfect match—one manufactures a product that the other distributes.

II. The Course of Business

In 2005, these seemingly complementary companies connected after Kukreja—CTX's founder and owner—asked an intermediary to introduce him to some Chinese PCB manufacturers. See Plaintiffs’ SMF ¶ 10; Defendants’ Objections ¶ 10 ("Admitted[.]"). In April of that same year, Kukreja met Shenzhen Kinwong's COO and partial owner, Mafio Shum. See Plaintiffs’ SMF ¶¶ 10–11; Defendants’ Objections ¶¶ 10–11 ("Admitted[.]"). Shortly after their meeting, Kukreja emailed Shum. See Plaintiffs’ SMF ¶ 11; Defendants’ Objections ¶ 11 ("Admitted[.]"). Kukreja—referring to Shenzhen Kinwong as "Kinwong"—wrote: "[I]t is my hope that we can build a strong relationship with Kinwong in the future. Keeping that in mind I would like to bring the following opportunity to Kinwong." Email from Rishi Kukreja to Mafio Shum (Apr. 27, 2005 11:47 AM) [ECF Nos. 186-23, 187-12]⁴ at 4. The opportunity consisted of a purchase order for 50,000 estimated annual units of each of six different products manufactured by Shenzhen Kinwong. Id. ; Plaintiffs’ SMF ¶ 11; Defendants’ Objections ¶ 11 ("Admitted[.]"). Notably, Kukreja wrote to Shum at his Kinwong email address: mafio@kinwong.com.⁵ See Emails re: CTX's Proposal to Capital Profit/Kinwong [ECF Nos. 186-23, 187-12] at 2–5.

Early on, the relationship between Shenzhen Kinwong and a company called Capital Profit confused Kukreja. Trying to resolve this perceived discrepancy, he emailed James Cheung, an intermediary, to ask: "Does Mafio [Shum] work directly for Kinwong or is he from another agency company (What is Capital-Profit)? I would like to work directly with the factories as much as possible." Emails re: Capital Profit/Kinwong [ECF Nos. 186-24, 187-13] at 2; Plaintiffs’ SMF ¶ 12; Defendants’ Objections ¶ 12 ("Admitted[.]"). In his reply, the intermediary copied Shum and explained that "Mafio is the President and owner of Kinwong Electronics (Shenzhen) Co., Ltd. The registered name in HK call [sic] ‘Capital Profit Development Ltd.’ It is a common thing like Olympic, Tatchun or other[ ] PCB board shops." Id. at 2; Plaintiffs’ SMF ¶ 13. The Defendants do not dispute that Kukreja understood this clarification. See Plaintiffs’ SMF ¶ 13; Defendants’ Objections ¶ 13 ("Admitted[.]"). At the time, Capital Profit—which is not a party here—owned 100% of the shares in Shenzhen Kinwong. See JSUF ¶¶ 6–8.

Within a month, Kukreja (through CTX) and Shum (acting on behalf of Capital Profit) signed a Manufacturer's Agreement, formalizing what they hoped would be a symbiotic relationship. See Id. When Kukreja sent the agreement to Shum for his signature, he wrote: "I look forward to building a strong relationship with Kinwong in the near future." Email from Rishi Kukreja to Mafio Shum (May 4, 2005 3:15 AM) [ECF No. 186-25] at 2 (emphasis added) (attaching the Draft 2005 Manufacturer's Agreement). In the draft version Kukreja emailed to Shum on May 4, 2005, the agreement stipulated that it was "by and between circuitronix, llc ... and Kinwong Electronic (Shenzhen) Co. Ltd. (Manufacturer)." Draft 2005 Manufacturer's Agreement [ECF No. 186-25] at 3. And it identified Shenzhen Kinwong as "having its principal place of business at Rm 502, 5/f, Block B, Veristrong Industrial Center, 36 Au Pui Wan Street, Fo Tan, HongKong." Id. The parties later revised the agreement—replacing "Shenzhen Kinwong" with "Capital Profit"—after Shum asked that, "since factory ‘Kinwong Electronic (Shenzhen) Co., Ltd.’ is 100% held by ‘Capital Profit Development Ltd.’ with the same director Mafio Shum, and owing to the foreign exchange, tax reason, etc., kindly amend the P.O. by using Capital Profit Development Ltd. instead of Kinwong." Email from Mafio Shum to Rishi Kukreja re: Draft Agreement [ECF Nos. 186-29, 187-16] at 2; see also Plaintiffs’ SMF ¶ 17; Defendants’ Objections ¶ 17 ("Admitted[.]").

The executed, final version was "by and between circuitronix, llc ... and Capital Profit Development Ltd. (Manufacturer) having its principal place of business at Rm 502, 5/f, Block B, Veristrong Industrial Center, 36 Au Pui Wan Street, Fo Tan, HongKong." 2005 Signed Manufacturer's Agreement [ECF No. 186-26] at 2. Capital Profit's address was thus the same as Shenzhen Kinwong's. Id. ; see also Draft 2005 Manufacturer's Agreement [ECF No. 186-25] at 3. Even though the executed agreement named only CTX and Capital Profit as contracting parties, everyone involved in the negotiations knew that Capital Profit was synonymous with Shenzhen Kinwong. See, e.g. , Email from Mafio Shum to Rishi Kukreja (May 5, 2005 4:41 AM) [ECF Nos. 186-29, 187-16] at 2 (explaining to Kukreja that " ‘Kinwong Electronic (Shenzhen) Co., Ltd.’ is 100% held by ‘Capital Profit Development Ltd.’ with the same director Mr. Mafio Shum," but that Capital Profit would be party to the agreement due to "foreign exchange" and "tax reason[s]"). It's undisputed, in other words, that CTX was buying PCBs from Shenzhen Kinwong through Capital Profit. See 2019 Kukreja Depo. at 33:7–10, 62:22–63:1 ("Q. Starting in 2005 Circuitronix had PCBs manufactured by Kinwong in Shenzhen, China, right? A. That is correct.... [T]he products that were being manufactured under the manufacturer's agreement were PCBs manufactured by Kinwong[.]").

From the beginning, in fact, CTX operated as if Capital Profit and Shenzhen Kinwong were one and the same. CTX employees referred to the new manufacturer as "Kinwong." Emails re: Kimball Electronics [ECF Nos. 186-30, 187-17] at 2 (email between CTX employees representing that they had "submitted a completed questionnaire to Kimball based on Kinwong"). Employees used the name "Kinwong" when they asked Kukreja questions. Id. (email from CTX employee asking Kukreja whether to use the name "Kinwong"). And Kukreja did the same. Id. (email from Kukreja telling employee to use the name "Kinwong"); Email from Rishi Kukreja to Daisy Ko re: Intellisense (Apr. 6, 2006 9:16 PM) [ECF Nos. 186-32, 187-19] at 2 (email from Kukreja asking CTX employee to "PLEASE PLACE ORDER ON CAPITAL PROFIT/KINWONG"). When Kukreja sent a purchase order that identified Capital Profit as the vendor, he asked the recipient: "PLEASE RELEASE THIS PO ON KINWONG." Email from Rishi Kukreja re: Purchase Order (June 12, 2005 10:34 PM) [ECF Nos. 186-31, 187-18] at 2–3. Even associates outside...