Netzsch Premier Technologies Complaint

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 1 of 23 PageID #: 1
UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
____________________________________
NETZSCH PREMIER
TECHNOLOGIES, LLC
Plaintiff,
v.
PHLER FEINMAHLTECHNIK GMBH

A/K/A PHLER (GUANGDONG)
SMART NANO TECHNOLOGY CO.
LTD. A/K/A PHLER (GUANGZHOU)
MACHINERY AND EQUIPMENT CO.,
LTD., DENNIS LEI, AND WILLEM LI
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No. 1:16-cv-781

COMPLAINT FOR TRADEMARK
COUNTERFEITING; TRADEMARK
INFRINGEMENT; FALSE
DESIGNATION OF ORIGIN, FALSE
DESCRIPTION AND UNFAIR
COMPETITION
JURY TRIAL DEMANDED
NETZSCH Premier Technologies, LLC (NETZSCH or Plaintiff) for its Complaint

against Defendants Phler Feinmahltechnik GmbH a/k/a Phler (Guangdong) Smart Nano
Technology Co., Ltd. a/k/a Phler (Guangzhou) Machinery and Equipment Co., Ltd. (PHLER),
Mr. Dennis Lei (a/k/a Lei Limeng), and Mr. Willem Li (a/k/a Li Jun, a/k/a Wiliam Li) (hereinafter
Defendants) alleges as follows:
Statement of the Case
1.
This is an action by NETZSCH against Defendants for injunctive relief, profits,
trebled and/or statutory damages, pre-judgment interest, attorneys fees and costs under the Lanham
Act based on Defendants counterfeit and infringing use of Plaintiffs trademarks in connection with
9108481 v1
the advertising, promotion, and sale of mixers, dispersers, mills, and related products that are not
Plaintiffs genuine products.
2.
NETZSCH brings this action to protect its reputation for selling products of the
highest quality, prevent deception of the consuming public by Defendants, retain control over the
substantial goodwill associated with its numerous registered trademarks being unlawfully exploited
by Defendants, and to avoid irretrievably lost sales.
Parties
3.
NETZSCH is a Delaware corporation having an address at 125 Pickering Way,
Exton, PA 19341.
4.
NETZSCH is the North American subsidiary of the globally operated group of
NETZSCH companies.
5.
PHLER is a Chinese corporation with a place of business at 1 Chuangyuan Road,
Zhongcun Street, Panyu District, Guangzhou, Guangdong, 511495 P.R. China.

6.
PHLER purports to be a German company headquartered at Saseler Chaussee 109
22393 Hamburg, Germany.

7.
PHLER purports to be a manufacturer and distributor of mixers, dispersers, mills,
and related products.

8.
Upon information and belief, Mr. Dennis Lei is the General Manager of PHLER.
9.
Upon information and belief, Mr. Lei resides at No. 016, Team 1, Zhujiaqi Village,
Nianyuxu Town, Huarong County, Hunan Province, China, 000.
2
9108481 v1
10.
Mr. Lei was employed from 2006-2008 as a sales engineer by NETZSCH
(Shanghai) Machinery and Instruments Co., Ltd., a subsidiary of the globally operated group of
NETZSCH companies.
11.
Upon information and belief, Mr. Willem Li is the Sales Director/Manager of
PHLER.
12.
Upon information and belief, Mr. Li resides at Room 302, No.4, Zijin 4 village,
Anting, Jiading District, China.

13.
Mr. Lis business address is Room 605, Telecom Industry Plaza, No. 25
Chengzhong Rd., Jiading District, Shanghai 201 800, China.

14.
Upon information and belief, Mr. Li was employed from 2005-2009 as a sales
manager by NETZSCH (Shanghai) Machinery and Instruments Co., Ltd., a subsidiary of the
globally operated group of NETZSCH companies.
15.
Mr. Leis past employment with NETZSCH put him on actual notice of
NETZSCHs intellectual property rights, including the infringing trademarks at issue in this action.
16.
Mr. Lis past employment with NETZSCH put him on actual notice of NETZSCHs
intellectual property rights, including the infringing trademarks at issue in this action.
17.
Upon information and belief, Messrs. Lei and/or Li selected the infringing
trademarks used by PHLER that are at issue in this action.

18.
Upon information and belief, Messrs. Lei and/or Li selected the NETZSCH
tradename FEINMAHLTECHNIK as part of PHLERs name to trade off of NETZSCHs

goodwill.
3
9108481 v1
19.
Upon information and belief, at trade shows Mr. Lei directly solicited NETZSCHs
employees to work at PHLER.

20.
Upon information and belief, Defendants distributed marketing materials bearing the
infringing trademarks and information authored by NETZSCH to NETZSCHs customers in the

United States, without NETZSCHs authorization.
21.
Defendants are doing business through a number of trade shows, including the
American Coatings Show held in this District, and through Defendants websites, including
www.puhler.com, www.nanogrindingmill.com, and puhler.gmc.globalmarket.com, through which
Defendants market and sell their products.
Jurisdiction and Venue
22.
This claim arises under 15 U.S.C. 1051, et seq. (the Lanham Act), particularly 15
U.S.C. 1114(1). This Court has subject matter jurisdiction over the claims pursuant to the
provisions of 28 U.S.C. 1331 (federal question jurisdiction) and 1338 (any Act of Congress
relating to trademarks) and 15 U.S.C. 1121 (action arising under the Lanham Act). This Court has
jurisdiction over the state law claims pursuant to 28 U.S.C. 1367 (supplemental jurisdiction).
23.
Venue is proper in this Court pursuant to 28 U.S.C. 1391(b) and 1391(c) because
Defendants are subject to the Courts personal jurisdiction and because a substantial part of the
events giving rise to this action took place in the District. Furthermore, NETZSCH has suffered
harm in this District and the Lanham Act provides that venue lies in the place of harm.
24.
Defendants have been doing business in this District, and have and/or are
advertising, distributing, offering for sale, and selling products wrongfully bearing counterfeits of
NETZSCH trademarks to persons located within this District.
4
9108481 v1
25.
This Court has personal jurisdiction over Defendants because, inter alia, Defendants
(1) have systematic and continuous contacts with this District, (2) transact and do business in this
District, (3) have websites that are accessible in this District, and (4) have reserved an exhibitor
booth for the 2016 American Coatings Show to be held in this District on April 12-14 2016.
P & Design Trademark
26.
NETZSCH is a leading manufacturer and distributor of mixers, dispersers, mills, and
related products (hereinafter referred to as NETZSCH Products).

27.
NETZSCH is responsible for promoting, marketing and selling in interstate
commerce throughout the United States high quality NETZSCH Products.

28.
NETZSCH is responsible for maintaining control over the quality of the NETZSCH
Products and services in this country.

29.
NETZSCH has developed an outstanding reputation because of the uniform high
quality of NETZSCH Products.

30.
NETZSCH is the owner of U.S. Reg. No. 3,426,673 for its P & Design trademark
for use in connection with industrial mixers, blenders, dispersers and mills; media milling and
dispersion equipment. The trademark record is attached as Exhibit A. An affidavit under Section 15
of the Lanham Act claiming incontestability for this registration was filed on September 24, 2013.
The Section 15 affidavit was acknowledged by the U.S. Patent and Trademark Office (USPTO) on
September 28, 2013. Accordingly, this registration is considered incontestable.
5
9108481 v1
31.
for use in connection with industrial mixers, blenders, dispersers and mills; media milling and
dispersion equipment. The trademark record is attached as Exhibit B. An affidavit under Section 15
of the Lanham Act claiming incontestability for this registration was filed on September 24, 2013.
The Section 15 affidavit was acknowledged by the USPTO on September 28, 2013. Accordingly,
this registration is considered incontestable.
32.
for use in connection with: industrial mixers; dispersing machines and mills; machines for mixing;
mixing, homogenizing and processing machines and apparatus for the food industry, chemical
industry, cosmetic industry and pharmaceutical industry, and parts for the aforesaid goods. The
trademark record is attached as Exhibit C.
33.
The P & Design trademark is distinctive and is used to identify high quality products
originating with NETZSCH.

34.
The P & Design trademark is arbitrary and fanciful and is entitled to the highest
level of protection afforded by law.

35.
NETZSCH uses the P & Design trademark in connection with the marketing and
sales of the NETZSCH Products, including on its website (www.netzsch-grinding.com), brochures,

6
9108481 v1
trade shows, and by other means. See, e.g. Exhibit L. NETZSCH has invested substantial effort
and resources in developing and promoting the NETZSCH Products under the P & Design
trademark.
36.
NETZSCHs P & Design trademark is widely recognized by customers as
identifying and distinguishing its products and there is considerable and valuable goodwill
associated with the P & Design trademark.
37.
Having continuously used the P & Design trademark to promote its products,
NETZSCH owns all rights in the trademark, as well as marks substantially similar thereto, and its
registrations are constructive notice of NETZSCHs rights as a matter of law.
ZETA Trademark
38.
NETZSCH is the owner of U.S. Reg. No. 2,620,559 for its ZETA trademark
for use in connection with mechanical and industrial agitators and their parts for processing and
production of low to highly viscous materials and mixtures, namely colors, pigments, food,
minerals, and pharmaceutical substances. The trademark record is attached as Exhibit D. An
affidavit under Section 15 of the Lanham Act claiming incontestability for this registration was filed
on September 3, 2008. The Section 15 affidavit was acknowledged by the USPTO on September
29, 2008. Accordingly, this registration is considered incontestable.
39.
NETZSCH is the owner of U.S. Reg. No. 3,767,507 for its ZETA trademark
7
9108481 v1
for use in connection with electrically operated machines, namely, agitator bead mills and structural
parts therefore for use in processing low to highly viscous products. The trademark record is
attached as Exhibit E. An affidavit under Section 15 of the Lanham Act claiming incontestability for
this registration was filed on March 31, 2015. The Section 15 affidavit was acknowledged by the
USPTO on April 8, 2015. Accordingly, this registration is considered incontestable.
40.
The ZETA trademark is distinctive and is used to identify high quality products
originating with NETZSCH.

41.
NETZSCH uses the ZETA trademark in connection with the marketing and sales of
the NETZSCH Products, including on its website (www.netzsch-grinding.com), brochures, trade

shows, and by other means. NETZSCH has invested substantial effort and resources in developing
and promoting its products under the ZETA trademark.
42.
NETZSCHs ZETA trademark is widely recognized by customers as identifying and
distinguishing its products and there is considerable and valuable goodwill associated with the
ZETA trademark.
43.
Having continuously used the ZETA trademark to promote its products, NETZSCH
owns all rights in the trademark, as well as marks substantially similar thereto, and its registrations
are constructive notice of NETZSCHs rights as a matter of law.
Infringing Acts
44.
Long after NETZSCHs adoption and first use of its P & Design and ZETA
trademarks Defendants started to use prominently the P & Design and ZETA trademarks, without
authorization from NETZSCH, in connection with their competing business.
8
9108481 v1
45.
Defendants prominently display the P & Design trademark
on PHLERs
websites. Examples of such displays are attached in Exhibit F.

46.
Defendants have incorporated the P & Design trademark into PHLERs company
logo
See Exhibit F.
47.
Defendants market products under the P & Design trademark that compete directly
in the marketplace with products that NETZSCH markets under the P & Design trademark,
including the NETZSCH Products.
48.
Defendants target markets include North America and Defendants have exported
their products to North America. See Exhibit F at 3.

49.
Upon information and belief, Defendants market their products under the P &
Design trademark directly to NETZSCHs U.S. customers.

50.
Defendants marketing materials that bear the P & Design trademark and are
distributed to NETZSCHs U.S. customers include information copied from NETZSCHs

documents without NETZSCHs authorization. See Exhibit J (Phler Presentation); Exhibit I
(NETZSCH Presentation).
51.
Defendants have no right to use the P & Design trademark.
52.
On information and belief, Defendants did not begin to use the P & Design
trademark in the U.S. until long after NETZSCH.

9
9108481 v1
53.
On information and belief, Defendants knew of NETZSCHs prior rights in the P &
Design trademark and disregarded those rights when they chose to adopt the P & Design trademark
in connection with competing products.
54.
Defendants are also using the ZETA trademark, without authorization from
NETZSCH, in connection with their competing business.

55.
Defendants have a mill named SuperMaxZeta, which they advertise at trade shows
and on their websites (e.g., http://www.puhler.com/En/pro_index.asp?cid=2). A screenshot of the

website is attached as Exhibit G.
56.
Defendants market products under the ZETA trademark that compete in the
marketplace with products that NETZSCH markets under the ZETA trademark, including the
NETZSCH Products.
57.
Defendants have no right to use the ZETA trademark.
58.
On information and belief, Defendants did not begin to use the ZETA in the U.S.
until long after NETZSCH.

59.
On information and belief, Defendants knew of NETZSCHs prior rights in the
ZETA trademark and disregarded those rights when they chose to adopt the ZETA trademark in
connection with competing products.
60.
Upon information and belief, Messrs. Lei and/or Li selected the infringing
trademarks used by Defendants with the intent to trade off of NETZSCHs goodwill.
61.
Defendants customers for products offered under their infringing trademarks are
likely to consist of many of the same customers who are already familiar with the products offered
by NETZSCH under those same trademarks.
10
9108481 v1
62.
Defendants offer and distribute products under their infringing trademarks through
channels of trade that overlap with those used to offer and distribute the products offered by
NETZSCH under those same trademarks, including the same trade shows and conventions.
63.
The American Coatings show is a leading North American industry show and
conference that occurs every two years. In 2014, more than 8,700 industry attendees from 69
countries visited the American Coatings Show.
64.
The 2016 American Coatings Show will be held in Indianapolis, Indiana on April
12-14, 2016. See http://www.american-coatings-show.com/.

65.
NETZSCH is registered to attend the 2016 American Coatings Show and has
reserved booth #2937.

66.
NETZSCH plans to market its products at the 2016 American Coatings Show using
its P & Design and ZETA trademarks.

67.
According to the American Coatings Shows website, PHLER is registered to
attend the 2016 American Coatings Show. See Exhibit K.

68.
In fact, PHLER has reserved booth #3042, which is right next to NETZSCHs
booth #2937. A floorplan for the show is attached as Exhibit H.

69.
On information and belief, Defendants will market competing products at the 2016
American Coatings Show using their infringing trademarks. See Exhibit K.

70.
On information and belief, there is a likelihood that customers and potential
customers will be confused at the 2016 American Coatings Show by Defendants marketing of
products using their infringing trademarks in the booth next to where NETZSCH will be marketing
its products using its P & Design and ZETA trademarks.
11
9108481 v1
71.
Defendants acts are deliberately calculated to confuse and deceive the public and
are performed with full knowledge of NETZSCHs rights. Said acts constitute willful and
deliberate infringement of NETZSCHs rights in the P & Design and ZETA trademarks.
72.
Defendants are not associated, affiliated, or connected with or endorsed or
sanctioned by NETZSCH.
73.
NETZSCH is not able to monitor, enforce, or maintain its quality control standards
on the non-genuine/counterfeit products Defendants manufacture, offer for sale, and sell.
74.
Defendants use of the P & Design and ZETA trademarks in the manner described
above tends to and does create the erroneous impression that Defendants products and services
emanate or originate from NETZSCH, and/or that said products are authorized, sponsored, or
approved by NETZSCH, even though they are not. This confusion causes irreparable harm to
NETZSCH and the P & Design and ZETA trademarks.
75.
Defendants have been unjustly enriched by illegally using and misappropriating
NETZSCHs intellectual property for their own financial gain. Furthermore, Defendants have
unfairly benefited and profited from NETZSCHs outstanding reputation for high quality products
and its significant advertising and promotion of the NETZSCH Products and the P & Design and
ZETA trademarks.
76.
Defendants acts, as set forth herein, are willful and deliberate. Therefore, this case
constitutes an exceptional case under 15 U.S.C. 1117(a).

Irreparable Harm to NETZSCH
12
9108481 v1
77.
Defendants unauthorized use of their infringing trademarks has caused and/or is
likely to cause confusion or mistake or deception, now and in the future, as to the origin, source, and
sponsorship of Defendants products and NETZSCHs products.
78.
Defendants use of counterfeits of NETZSCHs trademarks has deceived and/or is
likely to deceive the consuming public into believing that they are purchasing genuine goods which
have been manufactured, authorized, or approved by NETZSCH, and has caused and/or is likely to
cause mistake in that consumers assume that NETZSCH has manufactured, authorized, or approved
the counterfeit products sold by Defendants.
79.
Defendants use of the infringing trademarks for products that are competing with
and/or closely related to NETZSCHs products have resulted in and will continue to result in
incalculable harm to NETZSCH because of a likelihood of confusion among customers and injury
to NETZSCHs reputation.
80.
In addition to causing NETZSCH to suffer incalculable, irrecoverable, and
irreparable lost sales, Defendants manufacture, distribution, and sale of counterfeit products
displaying NETZSCHs trademarks will irreparably injure NETZSCHs reputation for the
manufacture and sale of the highest quality products because NETZSCH is unable to control the
quality of the materials used by Defendants. Indeed, there is no way to know the quality or safety of
the counterfeit products.
81.
Upon information and belief, Defendants conduct is continuing and will continue
unless enjoined by this Court.

82.
NETZSCH has no adequate remedy at law.
13
9108481 v1
COUNT I
Trademark Counterfeiting 15 U.S.C. 1114
83.
NETZSCH repeats and re-alleges each and every allegation set forth in the
foregoing paragraphs as if fully set forth herein.

84.
Defendants have used spurious designations that are identical with, or substantially
indistinguishable from, the P & Design and ZETA trademarks and possibly other NETZSCH
trademarks, on the counterfeit products they promote, offer for sale, and sell.
85.
Defendants have intentionally used these spurious designations knowing they are
counterfeit, in connection with the advertisement, promotion, offering for sale, and sale of
counterfeit mixers, dispersers, mills, and related products.
86.
Defendants unauthorized use of NETZSCHs P & Design and ZETA trademarks as
set forth above is likely to:

a. Cause confusion, mistake, and/or deception;
b. Cause the public to believe that Defendants counterfeit mixers,
dispersers, mills, and related products are authorized, sponsored, or
approved by NETZSCH, when they are not; and
c. Result in Defendants unfairly benefiting from NETZSCHs advertising
and promotion and profiting from NETZSCHs reputation and its P &
Design and ZETA trademarks all to the substantial and irreparable injury
of the public, NETZSCH, and its trademarks and the substantial goodwill
represented thereby.
87.
Defendants acts constitute willful trademark counterfeiting in violation of Section
32 of the Lanham Act, 15 U.S.C. 1114.

14
9108481 v1
88.
By reason of the foregoing, Defendants are liable to NETZSCH for: (a) an amount
representing three time NETZSCHs damages and/or Defendants profits, whichever is greater, or
an election of statutory damages; and (b) reasonable attorneys fees, costs including investigative
fees, and pre-judgment interest pursuant to 15 U.S.C. 1117.
COUNT II
Trademark Infringement 15 U.S.C. 1114
89.

90.
This is a claim for infringement of NETZSCHs federally registered trademarks
arising under Section 32 of the Lanham Act, 15 U.S.C. 1114.

91.
As owner of the various federally registered trademarks listed herein, NETZSCH
has the exclusive right to import and sell in the U.S. mixers, dispersers, mills, and related products
bearing its trademarks, and has express authority to take action to prevent actual or threatened
infringement of those trademarks.
92.
Continually, for a long time prior to the acts of the Defendants complained of herein,
NETZSCH has sold a wide range of mixers, dispersers, mills, and related products that use the
NETZSCH trademarks.
93.
Continually, for a long time prior to the acts of the Defendants complained of herein,
NETZSCH has been and is now marketing, offering for sale and selling products bearing the
NETZSCH trademarks in the State of Indiana and elsewhere in interstate commerce. Through
NETZSCHs extensive sales, the public has come to recognize NETZSCH products as being of
excellent quality and reputation.
15
9108481 v1
94.
By reason of their high quality and as a result of NETZSCHs continued and
extensive sales, advertising, and promotion, products sold under NETZSCHs trademarks enjoy an
excellent reputation among the public. NETZSCHs trademark registrations and the resulting
goodwill which has accrued are of great value to NETZSCH in the conduct of its business.
95.
Defendants, with full knowledge of the distinctiveness and widespread recognition
of NETZSCHs trademarks, are promoting and selling to the public counterfeit products that bear
false reproductions of NETZSCHs trademarks. NETZSCH has never authorized or consented in
any way to the use of its trademarks on any of Defendants products, nor has NETZSCH granted
any license to Defendants allowing such use.
96.
Defendants have counterfeited the P & Design trademark in the identical color and
logo style as that used by NETZSCH.

97.
Defendants use of counterfeits of the NETZSCH trademarks in connection with
their sale and distribution of competing products infringes NETZSCHs exclusive rights in its
federally registered trademarks, is likely to cause, and/or has caused, confusion, mistake or
deception, and constitutes trademark infringement in violation of 15 U.S.C. 1114.
98.
Defendants conduct is intentionally fraudulent, malicious, willful, and wanton, and
Defendants should be held liable to NETZSCH for additional remedies, including treble damages
and attorneys fees pursuant to 15 U.S.C. 1117.
99.
Defendants conduct is causing immediate and irreparable injury to NETZSCH and
to its goodwill and reputation, and will continue both to damage NETZSCH and to deceive the
public, unless permanently enjoined by this Court. NETZSCH has no adequate remedy at law.
16
9108481 v1
100.
By reason of the foregoing, Defendants are liable to NETZSCH for: (a) an amount
representing NETZSCHs damages; (b) Defendants profits; and (c) reasonable attorneys fees,
costs including investigative fees, and pre-judgment interest pursuant to 15 U.S.C. 1117.
COUNT III
False Designations of Origin, False Descriptions and Unfair Competition 15 U.S.C.
1125(a)
101.

102.
This is a claim for false designation of origin, false description, or representation and
unfair competition arising under the Lanham Act, Section 43(a), 15 U.S.C. 1125(a).
103.
The use of reproductions of NETZSCHs trademarks on products sold by
Defendants constitutes the use in commerce of false designations of origins, false description, and
unfair competition because such designations and representations tend to wrongly and falsely
designate the products distributed, offered for sale, and sold by Defendants as originating from,
being connected with, sponsored or authorized by NETZSCH.
104.
On information and belief, the counterfeit products that Defendants sell and offer for
sale are deliberately and intentionally designed to falsely simulate genuine NETZSCH products and
damage NETZSCHs excellent reputation.
105.
By reason of the foregoing, Defendants have violated and are continuing to violate
Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) and Defendants are liable to NETZSCH for:
(a) an amount representing NETZSCHs damages; (b) Defendants profits; and (c) reasonable
attorneys fees, costs including investigative fees, and pre-judgment interest pursuant to 15 U.S.C.
1117.
17
9108481 v1
106.
NETZSCH has no adequate remedy at law and is suffering irreparable harm.

COUNT IV
Common Law Unfair Competition
107.
NETZSCH repeats and re-alleges each and every allegation in the foregoing
paragraphs as if fully set forth herein.

108.
Defendants acts have caused a likelihood of injury to NETZSCHs goodwill and
business reputation, impaired the effectiveness of the NETZSCH trademarks, and diluted
NETZSCHs distinctive trademarks.
109.
NETZSCHs trademarks have come to have a secondary meaning indicative of
origin, relationship, sponsorship, or association with NETZSCH. The purchasing public is likely to
attribute to NETZSCH the use by Defendants of NETZSCHs trademarks, as a source of origin,
authorization, or sponsorship for Defendants products and, therefore, to utilize and/or buy
Defendants products in that erroneous belief.
110.
Upon information and belief, Defendants have intentionally appropriated
NETZSCHs trademarks with the intent of causing confusion, mistake, and deception as to the
source of its goods, and with the intent to palm off its goods as those of NETZSCH, and to place
others in the position to palm off their goods as those of NETZSCH and, as such, Defendants have
committed trademark infringement and unfair competition under the common law of the State of
Indiana.
PRAYER FOR RELIEF

WHEREFORE, NETZSCH prays for judgment as follows:
18
9108481 v1
A. Grant of a permanent injunction enjoining and restraining Defendants and their officers,
agents, servants, employees, owners, representatives, and attorneys, and all those in
active concert or participation with them, from:
a. substantially imitating, copying, counterfeiting, or making unauthorized use of
NETZSCHs trademarks;
b. manufacturing, distributing, importing, circulating, advertising, selling, offering
for sale, moving or otherwise disposing of any product or simulation,
reproduction, counterfeit, copy, or colorable imitation of NETZSCHs
trademarks;
c. using any simulation, reproduction, counterfeit, copy, colorable, or confusingly
similar imitation of NETZSCHs trademarks;
d. using any false description or designation of origin or representation (including,
without limitation, any letters, words, symbols, or other text) which can, or is
likely to lead the trade or public, or individual members thereof, to believe that
any product manufactured, imported, advertised, distributed, and/or sold by
Defendants is in any manner associated or connected with NETZSCH or is sold,
licensed, sponsored, or approved by NETZSCH;
e. engaging in any course of conduct likely to cause confusion, deception, or
mistake, or to injure NETZSCHs business reputation or dilute the distinctive
quality of NETZSCHs name and trademarks;
f. engaging in any other activity constituting an infringement of NETZSCHs
trademarks or NETZSCHs rights in or right to exploit the same;
19
9108481 v1
g. secreting, destroying, altering, removing, or otherwise dealing with the

unauthorized products or any books or records which contain any information
relating to the importing, manufacturing, producing, acquiring, distributing,
circulating, selling, marketing, offering for sale, advertising, promoting, renting,
or displaying of unauthorized products which infringe NETZSCHs trademarks;
h. causing an infringement of any of NETZSCHs trademarks or of NETZSCHs
rights to use or to exploit said trademarks, or causing any dilution of NETZSCHs
name, reputation, or goodwill; and
i. assisting, aiding, or abetting any other person or business entity in engaging in or
performing any of the activities referred to in subparagraphs (a) through (h),
above.
B. Enter an order for Judgment in favor of NETZSCH and against Defendants on each and
every Claim of this Complaint, including:
a. Finding that the Defendants have unfairly competed with NETZSCH by the acts
complained of herein;
b. Finding that the Defendants have infringed NETZSCHs trademarks by the acts
complained of herein;
c. Directing that the Defendants deliver up for destruction to NETZSCH all
unauthorized products, articles, and advertising material of any kind in its
possession or under its control bearing any of NETZSCHs trademarks or any
simulation, reproduction, counterfeit, copy, or colorable imitation thereof, and all
20
9108481 v1
plates, molds, matrices, and other means of production of same pursuant to 15

U.S.C. 1118;
d. Requiring Defendants to recall all of their products sold under or bearing
counterfeits of NETZSCHs trademarks;
e. Requiring that the Defendants, within thirty (30) days after service of notice of
the entry of judgment, or an injunction pursuant thereto, file with the Court and
serve on NETZSCHs counsel a written report under oath setting forth in detail
the manner in which the Defendants have complied with the Courts order and
this injunction pursuant to 15 U.S.C. 1116(a);
f. Awarding to NETZSCH all of Defendants gross profits and any other damages
NETZSCH has sustained as a consequence of the Defendants infringement of
NETZSCHs trademarks and unfair competition and requiring Defendants to
account for all gains, profits, and advantages derived by Defendants from the
sale of their infringing products bearing NETZSCHs trademarks and that the
award to NETZSCH be trebled, as provided for under 15 U.S.C. 1117(b);
alternatively, that NETZSCH be awarded statutory damages pursuant to 15
U.S.C. 1117(c) of up to Two Million Dollars ($2,000,000) for each trademark
per type of goods sold that Defendants have willfully counterfeited and
infringed;
g. Awarding to NETZSCH the costs of this action together with reasonable
attorneys and investigators fees and prejudgment interest in accordance with 15
U.S.C. 1117;
21
9108481 v1
h. That NETZSCH be awarded punitive damages for Defendants willful and

malicious acts of counterfeiting, infringement, and false designations of origin to
deter future unlawful activities complained of herein.
i. That pursuant to 11 U.S.C. 523(a)(6), Defendants be prohibited from a
discharge under 11 U.S.C. 727 for malicious, willful, and fraudulent injury to
NETZSCH.
j. Awarding to NETZSCH such other and further relief as the Court may deem just
and proper or otherwise provided by law, together with the costs and
disbursements which NETZSCH has incurred in connection with this action.
JURY DEMAND
NETZSCH demands a trial by jury on all claims and issues so triable.
22
9108481 v1
Respectfully submitted,
Date: April 8, 2016
/s/Patrick F.X. Fitzpatrick, Jr.

Jeffrey Kosc, Attorney No. 26234-49
Patrick F.X. Fitzpatrick, Jr., Attorney No. 32303-49
Benesch, Friedlander, Coplan & Aronoff LLP
One American Square, Suite 2300
Indianapolis, Indiana 46282-0018
Telephone: 317.685.6131
Facsimile: 317.685.6031
pfitzpatrick@beneschlaw.com
Of counsel (subject to pro hac vice admission)
Wesley W. Whitmyer, Jr.
Michael A. Lavine
Stephen F.W. Ball, Jr.
WHITMYER IP GROUP LLC
600 Summer Street
Stamford, Connecticut 06901
Telephone: (203) 703-0800
Facsimile: (203) 703-0801
wwhitmyer@whipgroup.com
mlavine@whipgroup.com
sball@whipgroup.com
litigation@whipgroup.com
Attorneys for Plaintiff, NETZSCH Premier
Technologies, LLC.
23
9108481 v1

Netzsch Premier Technologies Complaint

Hochgeladen von

Dokumentinformationen

Copyright

Verfügbare Formate

Dieses Dokument teilen

Dokument teilen oder einbetten

Freigabeoptionen

Stufen Sie dieses Dokument als nützlich ein?

Sind diese Inhalte unangemessen?

Copyright:

Verfügbare Formate

Netzsch Premier Technologies Complaint

Hochgeladen von

Copyright:

Verfügbare Formate

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 1 of 23 PageID #: 1

UNITED STATES DISTRICT COURT

PHLER FEINMAHLTECHNIK GMBH

Civil Action No. 1:16-cv-781

NETZSCH Premier Technologies, LLC (NETZSCH or Plaintiff) for its Complaint

This is an action by NETZSCH against Defendants for injunctive relief, profits,

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 2 of 23 PageID #: 2

NETZSCH is a Delaware corporation having an address at 125 Pickering Way,

NETZSCH is the North American subsidiary of the globally operated group of

PHLER is a Chinese corporation with a place of business at 1 Chuangyuan Road,

Zhongcun Street, Panyu District, Guangzhou, Guangdong, 511495 P.R. China.

PHLER purports to be a German company headquartered at Saseler Chaussee 109

22393 Hamburg, Germany.

PHLER purports to be a manufacturer and distributor of mixers, dispersers, mills,

and related products.

Nianyuxu Town, Huarong County, Hunan Province, China, 000.

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 3 of 23 PageID #: 3

Mr. Lei was employed from 2006-2008 as a sales engineer by NETZSCH

Upon information and belief, Mr. Willem Li is the Sales Director/Manager of

Anting, Jiading District, China.

Chengzhong Rd., Jiading District, Shanghai 201 800, China.

trademarks used by PHLER that are at issue in this action.

tradename FEINMAHLTECHNIK as part of PHLERs name to trade off of NETZSCHs

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 4 of 23 PageID #: 4

employees to work at PHLER.

infringing trademarks and information authored by NETZSCH to NETZSCHs customers in the

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 5 of 23 PageID #: 5

NETZSCH is a leading manufacturer and distributor of mixers, dispersers, mills, and

related products (hereinafter referred to as NETZSCH Products).

NETZSCH is responsible for promoting, marketing and selling in interstate

commerce throughout the United States high quality NETZSCH Products.

Products and services in this country.

NETZSCH has developed an outstanding reputation because of the uniform high

quality of NETZSCH Products.

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 6 of 23 PageID #: 6

originating with NETZSCH.

level of protection afforded by law.

sales of the NETZSCH Products, including on its website (www.netzsch-grinding.com), brochures,

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 7 of 23 PageID #: 7

NETZSCHs P & Design trademark is widely recognized by customers as

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 8 of 23 PageID #: 8

originating with NETZSCH.

the NETZSCH Products, including on its website (www.netzsch-grinding.com), brochures, trade

NETZSCHs ZETA trademark is widely recognized by customers as identifying and

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 9 of 23 PageID #: 9

Defendants prominently display the P & Design trademark

websites. Examples of such displays are attached in Exhibit F.

their products to North America. See Exhibit F at 3.

Design trademark directly to NETZSCHs U.S. customers.

distributed to NETZSCHs U.S. customers include information copied from NETZSCHs

Defendants have no right to use the P & Design trademark.

trademark in the U.S. until long after NETZSCH.

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 10 of 23 PageID #: 10

NETZSCH, in connection with their competing business.

and on their websites (e.g., http://www.puhler.com/En/pro_index.asp?cid=2). A screenshot of the

Defendants have no right to use the ZETA trademark.

until long after NETZSCH.

On information and belief, Defendants knew of NETZSCHs prior rights in the

Case 1:16-cv-00781-WTL-MPB Document 1 Filed 04/08/16 Page 11 of 23 PageID #: 11

12-14, 2016. See http://www.american-coatings-show.com/.

reserved booth #2937.

its P & Design and ZETA trademarks.

According to the American Coatings Shows website, PHLER is registered to

attend the 2016 American Coatings Show. See Exhibit K.