The opinion of the court was delivered by: Judge Caputo
Before me is an application for a preliminary injunction (Doc. 2) by a newly formed corporation known as RD Distribution, Inc., (hereinafter RDD) which seeks to enjoin Steven M. Holtzman and Roger Dubuis North America, Inc. (hereinafter RDNA) f/k/a Helvetia Time Corporation from using Roger Dubuis Genevan Watchmaker and Roger Dubuis trademarks or infringing the trademarks in connection with advertisement, promotion, sale or distribution of any goods or services and from communicating with existing and prospective retailers of Roger Dubuis Watches concerning the sale or offering for sale of Roger Dubuis Watches. Hearings were held on February 15, 2006, February 16, 2006 and February 23, 2006.
On February 22, 2006, Plaintiff filed an amended motion for preliminary injunction (Doc. 28) which sought to add the following orders directed to Defendants:
(A) enjoin the sales of watches with the trademark Roger Dubuis Horloger Genevois and/or Robert Dubuis without express written consent of MRD*fn1;
(B) enjoin the sale of the trademark rights to any other person or entity;
(C) enjoin communicating with existing and/or prospective retailers of Roger Dubuis watches concerning Plaintiff(s)*fn2 or the sale or offering for sale of Roger Dubuis watches;
(D) enjoin holding themselves out to the public as a certified distributor of Roger Dubuis Watches; and
(E)(i) order Defendants to withdraw their request for reconsideration for Roger Dubuis Trademarks under U.S. Custom regulations; and (ii) to notify the U.S. Customs that, to the extent Defendants' consent is necessary, Defendants consent to importing products under the trademark.
Because I find there is no irreparable harm suffered by the Plaintiff RDD, the motion will be denied.
RDNA became the distributor for the United States, Canada, the Carribean and Mexico of Roger Dubuis Watches by virtue of a distribution agreement with the manufacturer, Manufacturer Roger Dubuis, SA, a Swiss Company (hereinafter MRD), which waseffectiveMay 19, 1999. (Pl. Ex. 1). The relationship between RDNA and MRD continued until the fall of 2005. Of significance during the period of the agreement was the registration of the trademark "Roger Dubuis" in the United States by RDNA.
On November 10, 2005, MRD purported to terminate the distribution agreement with RDNA by a letter stating as the grounds therefor the non-payment of contractual obligations. (Pl. Ex. 17) This letter was the result of a failure to pay in accordance with a September 21, 2005 letter (Pl. Ex. 64) which gave RDNA, a 30 day grace period to pay as provided in Article 7.01 of the agreement. During the course of the two days of hearing on the motion, RDD presented evidence of grey market sales, sales of competitive product and tortious interference, and asserted each was also a ground for termination of the agreement. RDD also presented an expert on Swiss Law, Daniel Perren, who opined that grey market sales and the sale of competitive product would, under Swiss law, constitute grounds for termination for just cause.
RDNA presented evidence that MRD knew about grey market sales to Westime in 2004 but never objected, much less considered termination. RDNA also presented evidence that it complained to MRD about grey market sales. RDNA presented evidence that it was permitted to sell Jean Dunaud, the competing brand, but it didn't sell it anyway. There were 2 to 3 sales of Jean Dunaud Watches by Mr. Olgle, but it was never clear by whom he was employed at the time of those sales. Lastly, RDNA presented evidence that MRD owed it money at the time MRD asserted that RDNA was delinquent. The evidence was not clear as to the balance of these debts.
As previously noted, RDNA registered the Roger Dubuis Trademark in theUnited States. It claims to have done so with the consent of MRD. The Trademark Manual of Examining Procedure provides that a distributor for a foreign manufacturer can register that manufactures trademark if it submits " written consent from the owner of the ...