In one of 2018’s most important trademark and copyright litigation judgments, Young Basile won a landmark $8.6 million judgment for plaintiff client MonRos International® and their ANESTHESIA® original brand of contact lenses (www.anesthesialenses.com) in an intellectual property infringement case filed in the District Court for the Northern District of Illinois in Chicago. The Court also issued a permanent injunction against the opposing defendants from using our client’s United States and International trademarks and copyrighted packaging artwork.
The case was filed in late 2017 against Anesthesia USA, Inc., and its principal, Nedal Alwawi, by Young Basile attorneys Kayvon Pourmirzaie (Palo Alto) as lead corporate counsel, Thomas Arden (Chicago) as lead trademark counsel, and Nicholas Kurk (Chicago) as lead litigation counsel.
Mr. Alwawi had set up a website on behalf of the client for the sale of MonRos International’s ANESTHESIA contact lens products in the United States. He also secured two U.S. registrations of the ANESTHESIA trademark, presumably for MonRos International’s benefit. However, the defendants registered the trademarks in the name of the corporate defendant in the U.S., as well as in several overseas registrations. Mr. Alwawi also registered the website domain name in his corporate entity’s name. When MonRos International requested the name and registrations be transferred, the defendants refused and began independently using the ANESTHESIA trademark and other trademarks created and first used by MonRos International. They also copied MonRos International’s packaging artwork for the sale of their own fake version of the contact lenses. Young Basile moved for a temporary restraining order and preliminary injunction, which were granted in October and late December of 2017.
Through third-party discovery and aggressive litigation tactics, Young Basile determined that the defendants were claiming prior use and independent creation based on fabricated evidence. They then moved for sanctions and to make the preliminary injunction against the offending sales permanent, as well as for damages, profits, treble damages, attorneys’ fees and costs.
The Court granted the motion in full. It awarded treble damages in the amount of $6,768,552; profits in the amount of 1,394,380; $100,000 in statutory damages; and MonRos International’s attorneys’ fees and costs. The Court enjoined the defendants from using the ANESTHESIA name and trademark, several other sub-brand names, and our client’s packaging artwork. This victory has enabled MonRos International to maintain its status as one of the leading international and Gulf Region contact lens manufacturers.
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Photo credit: www.anesthesialenses.com