United States District Court, W.D. North Carolina, Charlotte Division
COGBURN JR. UNITED STATES DISTRICT JUDGE.
MATTER is before the Court on Plaintiff’s
Motion for Preliminary Injunction. (Doc. No. 2). This Court
conducted a hearing on the motion on September 25, 2019.
Having considered the Motion, the Court enters the following
Monti Antonio S.p.A. (“Monti” or
“Plaintiff”) is an Italian manufacturer of
market-leading machinery used in the textile industry.
Plaintiff is the exclusive owner of the MONTI ANTONIO®
trademark. (Doc. No. 1 at ¶ 64 & Ex. E). The mark is
valid and incontestable. (Id. at ¶¶
64-65). For decades, Plaintiff has used the mark to market
its industrial machines. (Id. at ¶ 63).
Plaintiff terminated its agency relationship with Defendants
in April 2019 and demanded that Defendants discontinue
holding themselves out as Plaintiff’s agent in the
United States. See (Doc. No. 1, Ex. 1: Decl. of
Theodore J. Folkman and April 2019 Demand Letter); see also
(Doc. No. 1 at ¶¶ 8, 57). Plaintiff alleges that
Defendants have refused to stop holding themselves out as
Plaintiff’s agent and refused to cease their infringing
activities. See (Doc. No. 1 at ¶¶ 2-4: Ex.
1; see, e.g., Doc. No. 1 at ¶¶ 58-62 and 70 and
Exs. C & D). Plaintiff alleges that Plaintiff’s
reputation and business interests in the United States are at
grave risk because Defendants are continuing to use the MONTI
ANTONIO® trademark and holding themselves out as
Plaintiff’s agent, thus creating the risk that they
will continue to damage Plaintiff’s relationships with
its customers and cause confusion among Plaintiff’s
alleges that Plaintiff’s counsel sent a demand letter
instructing Defendants inter alia to “cease all use of
the Monti Antonio trademarks or other intellectual
property…” and to “cease holding yourself
out as an agent, distributor, or representative of Monti
Antonio.” Plaintiff alleges that Defendants have
continued to hold themselves out as Plaintiff’s
authorized agent, and they continue to operate a website in
which they infringe on the MONTI ANTONIO® mark.
Defendants did not respond to the demand letter, which also
requests an accounting and demands that they preserve
filed this action on August 22, 2019, and served Defendants
with the Complaint on August 28, 2019. In this action,
Plaintiff brings claims against Defendants for breach of
contract, breach of fiduciary duties, violation of the North
Carolina Unfair and Deceptive Trade Practices Act, violations
of the Lanham Act, and conversion. Defendants’ Answer
was due on September 18, 2019, but Defendants did not
respond, nor have they otherwise appeared to defend this
filed the pending motion for preliminary injunction along
with the Complaint. In the motion for preliminary injunction,
Plaintiff asks this Court for a preliminary injunction
ordering Defendants: (1) to immediately to remove all
references to Plaintiff’s products from their website;
(2) to cease any further use of the MONTI ANTONIO® mark;
and (3) to stop holding themselves out as Plaintiff’s
agent. Defendants have not responded to the motion. The Court
held a hearing on the preliminary injunction motion on
September 25, 2019. Defendants did not appear at the hearing;
thus, the motion is unopposed.
must make four clear showings to obtain a preliminary
injunction: “(1) it is likely to succeed on the merits;
(2) it is likely to suffer irreparable harm without the
preliminary injunction; (3) the balance of equities tips in
its favor; and (4) the injunction is in the public
interest.” See Mountain Valley Pipeline, LLC v. W.
Pocahontas Props. Ltd. P’ship, 918 F.3d 353, 366
(4th Cir. 2019) (citing Winter v. Nat. Res. Def. Council,
Inc., 555 U.S. 7, 20 (2008) (internal citations
omitted)); see also Dewhurst v. Century Aluminum
Co., 649 F.3d 287, 290 (4th Cir. 2011) (applying a
four-factor test based on the holding in Winter).
Plaintiff has made all four showings.
Plaintiff is highly likely to succeed on the merits. The
elements of trademark infringement are ownership of the mark,
use of the mark in commerce and without authorization,
defendant’s use of the mark in connection with
advertising goods or services, and likely confusion. See
Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152
(4th Cir. 2012). The Verified Complaint shows that Plaintiff
owns the mark, that the mark is valid, and that Defendants
are using the trademark without permission.
Plaintiff has shown that it is likely to suffer irreparable
harm without the preliminary injunction. Here, Plaintiff has
alleged that Defendants continue to operate a website in
which they infringe on Plaintiff’s trademark and
continue to advertise that they are Plaintiff’s
authorized agents. Plaintiff has also shown that
Defendants’ actions will continue to cause confusion as
to the ownership of the trademark and whether they are
authorized to sell products on Plaintiff’s behalf.
Thus, having established ownership of a mark, infringing
conduct, and consumer confusion, the second factor,
irreparable harm is satisfied.
the balance of equities tips in Plaintiff’s favor.
Plaintiff has shown that Defendants are infringing on a
trademark they do not own and are not authorized to act as
Plaintiff’s agent. Thus, Defendants will not suffer any
harm if they are ordered to discontinue use of the MONTI
ANTONIO® mark on their website and ordered to discontinue
holding themselves out Plaintiff’s commercial agent.
the injunction is in the public interest because there
“is a strong public interest in preventing trademark
infringement.” Rebel Debutante LLC v. Forsythe
Cosmetic Grp., Ltd., 799 F.Supp.2d 558, 581 (M.D. N.C.
2011). “Indeed, the purpose of a trademark is to
protect the public from confusion about the identity of the
enterprise from which goods and services are
purchased.” See id. (granting motion for
preliminary injunction regarding use of a mark that infringed
on the plaintiff’s trademark) (internal quotations
omitted) (citing AMP Inc. v. Foy, 540 F.2d 1181,
1185-86 (4th Cir. 1976)). Because the public interest favors
preventing consumer confusion and protecting registered
marks, the public interest factor weighs in Plaintiff’s
favor as well.
the Court finds that the four relevant factors favor a grant
of Plaintiff’s motion for preliminary injunction. As