Thai Jasmine Rice Trademark Dispute
We’ve blogged before about legal translation issues involving patent and trademark infringement litigation. In Vinh-Sanh Trading v. SFTC, a recent California district court case, the plaintiff filed a motion for a preliminary injunction seeking to enjoin the defendant from infringing upon its trademark in the sale of jasmine rice from Thailand. As with many patent and trademark cases, the litigation discussed below involved important legal translation issues, from the disputed trademark itself to the interpretation of key deposition testimony.
In the 1980’s, the plaintiff, an importer and distributor of Jasmine rice and other rice-based products, created a “Three Ladies” brand consisting of a picture of three women wearing clothing from Cambodia, Vietnam, and Laos. The plaintiff entered into an agreement with the defendant, an importer and distributor of Asian foods, for the sale of a small batch of the plaintiff’s “Three Ladies” rice. When the plaintiff discovered that the defendant was selling and marketing other Thai jasmine rice with images of three women wearing clothing similar to the clothing depicted in the plaintiff’s “Three Ladies brand,” the plaintiff terminated its relationship with the defendant and filed suit for federal trademark infringement under 15 U.S.C. § 1114, Federal Unfair Competition, Common Law Trademark Infringement, and Unfair Competition under Cal. Bus. & Prof. Code § 17200.
Plaintiff’s Motion for Preliminary Injunction
Plaintiff filed a motion for a preliminary injunction asking the court for a number of types of relief, including enjoining the defendant from manufacturing or promoting any goods or services that infringe on the plaintiff’s trademarks, using the plaintiff’s trademarks, or competing with the plaintiff unfairly. In evaluating the plaintiff’s motion, the court first explained that “a plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Rodriguez v. Robbins, 715 F.3d 1127, 1133 (9th Cir. 2013).
Likelihood of Success on the Merits.
With regard to the first requirement, the court held that the plaintiff was likely to succeed on the merits of a trademark infringement claim. The court held that the plaintiff’s registered trademarks constituted “prima facie evidence” of the marks’ validity and the plaintiff’s right to use them. The court held that the plaintiff was also likely to be able to demonstrate the likelihood of confusion, and that the “Three Ladies” trademark was a strong one. The court explained that “trademarks consisting of non-English words must pass the ‘foreign equivalents’ test: the mark is translated into English to see whether, ‘to those American buyers familiar with the foreign language, the word would have a descriptive connotation.’” The court held that because the plaintiff’s Vietnamese mark translates to “three ladies” or “three girls,” it was distinctive in both languages. The court further noted that the image of the three women pictured on the defendant’s rice in traditional Asian clothing was significantly similar to the image of the three women depicted on the plaintiff’s rice.
The defendant had argued that it selected its new photo depicting the three Asian ladies after learning that the model featured on its previous design had passed away. The defendant argued that its CEO was uncomfortable releasing a “high-volume product featuring a model he understood to be deceased.” The defendant also argued that the deposition testimony of its founder had a “glaring translation,” but the court rejected this argument and held that for purposes of the preliminary injunction, the defendant Hs adopted its trademarks with full knowledge of the plaintiff’s trademark.
While the court held that the plaintiff was likely to succeed on the merits of its trademark infringement claim, the court held that the plaintiff had not made a sufficient case that it would suffer irreparable harm if the injunction were not granted, describing the plaintiff’s evidence of irreparable harm as “thin.” First, the court noted that the plaintiff claimed that the defendant’s rice was of a “lower quality” and sold at a lower price point. The court also noted that although the plaintiff claimed the defendant was engaged in “shoddy sales practices” and did not understand the requirements for good quality rice, the court found that it was tenuous as to whether the plaintiff was actually being damaged by their customers’ alleged association with the defendant’s poor sales practices. In sum, the court found that the plaintiff had not sufficiently demonstrated that it was likely to suffer irreparable harm.
Balance of Hardships and Public Interest.
With regard to the third requirements, the balance of hardships, the court found that the hardship on the defendant would be the most significant as it had rice in its inventory that it would be unable to sell if the injunction were granted. In fact, the defendant estimated that its potential losses would be as much as $1 million. The plaintiff argued that the defendant could simply re-package its rice for future use, but the court decided that the potential hardship to the defendant was too great. Regarding the final factor, the court found that the public interest factor favored the plaintiff as “preventing consumer confusion serves the public interest.”
Based on the foregoing analysis, the court held that while the plaintiff was likely to prevail on the merits of its trademark infringement claim, it had failed to sufficiently show that it would suffer irreparable harm absent the court issuing a preliminary injunction and the balance of hardships favored the defendant.
The case is Vinh-Sanh Trading Corporation v. SFTC, Inc., et al., Case No. 19-CV-04315, decided on November 22, 2019 in the United States District Court for the Northern District of California.
Contact All Language Alliance, Inc. to retain deposition interpreters in Thai, Vietnamese, Spanish, Korean, other languages, and to translate foreign language evidence in trademark infringement cases from any language to English.
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