Mon Ros Int’l. for General Trading & Contracting, W.L.L. v. Anesthesia USA, Inc., No. 17 C 7365, Slip Op. (N.D. Ill. Jan. 8, 2019) (Castillo, C.J.).

Chief Judge Castillo granted in part plaintiff Mon Ros’ contempt motion in this Lanham Act trademark case involving Mon Ros’ ANESTHESIA marks for use with contact lenses.

The Court previously entered a temporary restraining order (TRO) and then a permanent injunction preventing defendants from selling contact lenses using the ANESTHESIA marks and from claiming ownership over the marks.

Of particular note, the Court held as follows:

• The Court was “troubled” by evidence that defendants used their resources to run a competing contact lens business, instead of paying the final judgment.
• The Court was also “troubled” that defendants were offering to sell contact lenses into the United States using Mon Ros’ AZURE and AMARILLO marks.
• The Court was also “disturb[ed]” by defendants’ argument / admission that they sold counterfeit ANESTHESIA products after the injunctions were entered into the U.S., but that there was no issue because those products “never set foot on U.S. soil.”
• Defendants’ “specious” arguments were made worse by defendants’ failure to provide evidence to challenge Mon Ros’ claims that defendants:
  • had resources to at least partially satisfy the judgment against defendants;
  • had falsified assets in federal tax returns; and
  • continued U.S. online counterfeit product sales.
• The Court held that the TRO and permanent injunctions set out a clear command not to sell or promote counterfeit products using Mon Ros’ marks, that defendants violated the command, having infringed Mon Ros’ trademarks and failed to pay the judgment, that those violations were significant, and that defendants failed to reasonably and diligently comply with the injunctions.

Having held that defendants violated the injunctions, the Court ordered as follows:

• Defendants were to produce all documents going back to January 1, 2017, related to:
  • Anyone defendants did business with or transferred assets to;
  • All accounting records, banking records and tax returns;
  • All documents relating to any trademark filings;
  • All documents relating to manufacture, sale or purchase of contact lenses, regardless of what trademark they may be sold under; and
  • All documents related to the individual defendant’s international travel over the last two years.
• Mon Ros was allowed to serve, and defendants were required to respond to, requests for production, requests for admission, and no more than twenty five interrogatories. Individual defendant was also ordered to sit for a deposition by Mon Ros.
• Within forty days of the order, defendants were also required to:
  • File a sworn affidavit stating the steps taken to comply with the Court’s order and his discovery obligations, including a narrative explaining what was done with revenues from selling certain contact lenses, to the extent they were in fact sold. The affidavit must also state that defendants have produced all responsive documents and, to the extent that some documents are not in their custody or control, state where those documents could be found.

Mon Ros’ other requested sanctions were denied without prejudice to be sought after any further evidence of non-compliance. The Court also noted that it would not incarcerate the individual defendant absent ongoing violations because doing so would be only punish for past violations, not stop current non-compliance.

Finally, the Court noted that Mon Ros failed to follow Local Rule 37.1 which required filing a notice of motion or order to show cause, instead of a motion for contempt. In the interests of justice, the Court still addressed the motion, but the Court warned Mon Ros to follow Local Rule 37.1 strictly to the extent that it filed another related motion.