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Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 1 of 12 IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION BMW OF NORTH AMERICA, LLC and BAYERISCHE MOTOREN WERKE AG, Plaintiffs, Case No. Jury Demanded v. AUTOHAUS K&H INC., dba TEXAS EUROPEAN AUTOHAUS, and OTTO OTHMAN, Defendants. COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND BREACH OF CONTRACT Plaintiffs BMW of North America, LLC and Bayerische Motoren Werke AG (collectively, BMW or Plaintiffs ) seek injunctive and monetary relief from Defendants Autohaus K&H Inc., dba Texas European Autohaus, and Otto Othman (hereinafter Defendants ) for trademark infringement, unfair competition, and breach of contract with regard to Plaintiffs famous Roundel logo, pictured below: As alleged more fully below, Defendants have violated, and continue to violate, the Trademark Act of 1946 as amended, 15 U.S.C. 1051 et seq. (the Lanham Act ), and Texas law through their unauthorized use of BMW s Roundel logo on their business signage.
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 2 of 12 Parties 1. Plaintiff BMW of North America, LLC ( BMW NA ) is a Delaware limited liability company with its principal place of business at 300 Chestnut Ridge Road, Woodcliff Lake, New Jersey 07677. BMW NA is a wholly owned subsidiary of BMW (US) Holding Corporation, a Delaware corporation, which is a wholly owned subsidiary of Bayerische Motoren Werke AG ( BMW AG ). BMW NA distributes new and previously owned BMW passenger cars and BMW light trucks through its authorized dealer networks across the country. 2. Plaintiff BMW AG is a corporation organized under the laws of the Federal Republic of Germany with its principal place of business at Petuelring 130, 80809 Munich, Germany. BMW AG designs and manufactures motor vehicles, parts and other products for sale in Europe and for export and sale throughout the world. 3. Defendant Autohaus K&H Inc., dba Texas European Autohaus, is a Texas corporation with its principal place of business at 2815 San Jacinto Street, Houston, Texas 77004-2705. Defendant is in the business of servicing and repairing automobiles, including BMWs, in competition with BMW and its authorized dealers. 4. Defendant Otto Othman is the Director of Autohaus K&H Inc., dba Texas European Autohaus, and has personally directed and participated in the infringing acts alleged herein. Jurisdiction and Venue 4. This Court has personal jurisdiction over Defendants because Defendants are citizens of and/or conduct business in the State of Texas. 5. This Court has jurisdiction over the subject matter of this action under 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338(a) and 1338(b), and has supplemental jurisdiction under 28 U.S.C. 1367(a) over BMW s claims under Texas law. 2
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 3 of 12 6. Venue is proper in this District under 28 U.S.C. 1391(b), as Defendants reside in and/or have their principal place of business in this District and, upon information and belief, a substantial part of the events or omissions giving rise to the claims occurred and are occurring in this District. BMW s Famous Roundel Logo 7. BMW is in the business of designing, manufacturing, distributing, and servicing motor vehicles and a variety of other products under various trademarks, including its Roundel logo shown above. 8. BMW NA, through itself and predecessors-in-interest, has been the exclusive licensee and authorized user of the Roundel logo in the United States continuously since at least as early as 1949 in connection with the sale and service of motor vehicles. 9. Since long prior to the acts of Defendants complained of herein, BMW has used its Roundel logo in connection with its business of designing, manufacturing, distributing, and servicing motor vehicles and a variety of other products in the State of Texas. 10. BMW AG is the owner of the following U.S. Registrations for the Roundel logo: Mark Reg. No. Reg. Date Services/Goods 613,465 Oct. 4, 1955 Automobiles, motorcycles and parts thereof 1,170,556 Sept. 22, 1981 Motor vehicle repair and maintenance services and dealership services 3
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 4 of 12 Mark Reg. No. Reg. Date Services/Goods 1,450,212 Aug. 4, 1987 Automobiles, motorcycles, parts thereof, including wheels, wheel rims, and watches, clocks and various other goods and services 2,752,258 Aug. 19, 2003 Cleaning preparations for use in the automotive field, engine oil and various other goods 3,418,573 Apr. 29, 2008 Leasing and financing services for motor vehicles; online credit applications and online banking; loan services 11. These registrations were duly and legally issued, and are valid and subsisting. Registrations 613,465; 1,170,556; 1,450,212; and 2,752,258 are incontestable pursuant to 15 U.S.C. 1065. 12. BMW AG has licensed the Roundel logo to BMW NA for use in connection with the distribution, sale, service, and repair of the aforementioned products in the United States. 13. BMW NA distributes BMW passenger cars and BMW light trucks and provides maintenance services for its customers through nationwide networks of authorized dealers and service providers. BMW NA authorizes BMW dealerships to use the Roundel logo in connection with the sale and/or service of BMW products. 4
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 5 of 12 14. To create and maintain goodwill among its customers, BMW NA has taken substantial steps to assure that all authorized BMW dealers using the Roundel logo are of the highest quality. 15. BMW has expended millions of dollars in advertising efforts across the country in connection with its Roundel logo. As a result of its long use and promotion of this mark, BMW has established its Roundel logo as a famous and distinctive mark among members of the American public. Defendants Wrongful Activities 16. On March 28, 2007, Defendants resolved a claim by BMW for trademark infringement by signing an agreement to cease and desist all uses of the BMW trademarks and logos (the Signed Agreement ). (See Exhibit A.) 17. In approximately November 2011, BMW discovered that Defendants had resumed using BMW s Roundel logo in willful violation of BMW s trademark rights. 18. Since that time, BMW has sent Defendants three letters requesting that they cease and desist all unauthorized uses of BMW s Roundel logo and trademark uses of any other BMW marks. 19. As of the filing of this Complaint, however, Defendants are still displaying BMW s Roundel logo in connection with their business. (See Exhibit B.) 20. Defendants have never provided services for BMW or any of its subsidiaries, affiliates or authorized agents. 21. Defendants are not affiliated with or sponsored by BMW and have never been authorized by BMW or any of its subsidiaries, affiliates or authorized agents to use BMW s Roundel logo in any form. 5
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 6 of 12 22. Defendants unauthorized use of BMW s Roundel logo is intended to divert to Defendants persons who are interested in the products and services of BMW and to trade off the goodwill of BMW s mark. 23. Defendants unauthorized use of BMW s Roundel logo in the manner described above: (a) is likely to cause confusion, to cause mistake, and/or to deceive customers and potential customers of the parties, as to the origin, sponsorship, or approval of Defendants products and services, or as to some affiliation, connection, or association of Defendants with BMW; (b) enables Defendants to trade off and receive the benefit of goodwill BMW has built up at great labor and expense over many years, and to gain acceptance for Defendants products and services not solely on their merits, but on the reputation and goodwill of BMW, its famous Roundel logo, and its products and services; (c) (d) unjustly enriches Defendants; and unlawfully removes from BMW the ability to control the nature and quality of products and services provided under its Roundel logo and places the goodwill and valuable reputation of BMW in the hands of Defendants, over whom BMW has no control. 24. BMW has been damaged and continues to be damaged by Defendants unauthorized use of BMW s Roundel logo in the manner described above. 25. Unless these acts of Defendants are restrained by this Court, they will continue to cause irreparable injury to BMW and to the public for which there is no adequate remedy at law. 6
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 7 of 12 25 herein. Count I Federal Trademark Infringement (Lanham Act 32, 15 U.S.C. 1114(1)) 26. BMW re-alleges and incorporates the allegations set forth in paragraphs 1 through 27. Defendants unauthorized use of BMW s Roundel logo in connection with identical goods and services is likely to cause confusion, to cause mistake, or to deceive as to the source or sponsorship of Defendants goods and services. 28. The acts of Defendants complained of herein constitute use in commerce of reproductions, copies, confusingly similar or colorable imitations of BMW s federally registered Roundel logo in connection with the sale, offering for sale, distribution and advertising of goods and services in violation of 15 U.S.C. 1114(1). 29. Defendants acts complained of herein have been deliberate, willful, intentional, and in bad faith, with full knowledge and in conscious disregard of BMW s rights in its Roundel logo and with intent to trade off BMW s vast goodwill in its mark. 30. As a result of the foregoing alleged actions of Defendants, Defendants have been unjustly enriched and BMW has been injured and damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will continue to suffer injury and damage. 30 herein. Count II Federal Unfair Competition and False Designation of Origin (Lanham Act 43(a), 15 U.S.C. 1125(a)) 31. BMW re-alleges and incorporates the allegations set forth in paragraphs 1 through 32. Defendants unauthorized use of BMW s Roundel logo falsely indicates that Defendants and their services are connected with, sponsored by, affiliated with, or related to BMW. 7
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 8 of 12 33. Defendants unauthorized use of BMW s Roundel logo has caused, and is likely to continue to cause, confusion, mistake or deception as to the source or sponsorship of Defendants goods and services. 34. Defendants acts complained of herein have been deliberate, willful, and intentional, with full knowledge and in conscious disregard of BMW s rights in its Roundel logo and with intent to trade off BMW s vast goodwill in its mark. 35. Defendants unauthorized use of BMW s Roundel logo in connection with their goods and services allows Defendants to receive the benefit of BMW s goodwill, which BMW has established at great labor and expense, and further allows Defendants to expand their business and sales, based not on their own qualities, but on the reputation and goodwill of BMW. 36. The acts of Defendants complained of herein constitute unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 37. As a result of the foregoing alleged actions of Defendants, Defendants have been unjustly enriched and BMW has been injured and damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will continue to suffer injury and damage. 37 herein. Count III Trademark Infringement and Unfair Competition (Common Law of Texas) 38. BMW re-alleges and incorporates the allegations set forth in paragraphs 1 through 39. Defendants unauthorized use of BMW s Roundel logo in connection with the service and repair of automobiles has caused, is causing and, unless enjoined by this Court, will continue to cause confusion and mistake in the marketplace and deception of the trade and public as to the relationship or affiliation of the parties and the source, origin, or sponsorship of their respective goods and services. 8
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 9 of 12 40. Defendants, with full knowledge of BMW s rights in its Roundel logo, and of the valuable goodwill associated therewith, has committed the acts alleged herein willfully, with the intent to trade off, or in complete disregard of, BMW s goodwill and the goodwill associated with BMW s Roundel logo. 41. The acts of Defendants complained of herein constitute trademark infringement and unfair competition in violation of the common law of Texas. 42. Defendants unauthorized use of BMW s Roundel logo in connection with the service and repair of automobiles has impaired, is impairing and, unless enjoined by this Court, will continue to impair BMW s reputation under its trademarks and has caused, is causing and, unless enjoined by this Court, will continue to cause injury and damage to BMW for which BMW is entitled to relief under the common law. 43. As a result of the foregoing alleged actions of Defendants, Defendants have been unjustly enriched and BMW has been injured and damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will continue to suffer injury and damage. 43 herein. Count IV Breach of Contract (Common Law of Texas) 44. BMW re-alleges and incorporates the allegations set forth in paragraphs 1 through 45. The Signed Agreement referenced above is a valid and binding contract. 46. Defendants are in violation of the Signed Agreement through their unauthorized use of BMW s Roundel logo on their business signage, as alleged more specifically above. 47. As a result of the foregoing alleged actions, Defendants have been unjustly enriched and BMW has been injured and damaged. 9
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 10 of 12 48. All conditions precedent to bringing this lawsuit have been performed, and BMW has performed its obligations under the Signed Agreement. 49. By failing to perform their duties owed to BMW, Defendants have breached their contractual obligations and damaged BMW in an amount to be determined at trial. BMW is thereby entitled to relief under the common law. Prayer for Relief WHEREFORE, BMW prays that: 1. Judgment be entered for BMW on its claims. 2. The Signed Agreement be specifically enforced. 3. Defendants, their agents, servants, employees, attorneys, and all others in active concert or participation with any of them, be enjoined and restrained, during the pendency of this action, and permanently thereafter, from: (a) using BMW s Roundel logo, or any colorable imitation thereof, either alone or part of any signs, flags, banners, interior and exterior walls, doors, window etchings, photographs, advertisements, commercial videos, websites, telephone directory or other internet or print advertisements, promotional materials, stationery, and business cards, or otherwise in connection with their business; and (b) doing any other act or thing likely to confuse, mislead, or deceive others into believing that Defendants, or their products or services, emanate from, or are connected with, sponsored by or approved by BMW. 4. An accounting be directed to determine Defendants profits resulting from their activities and that such profits be paid over to BMW and increased as the Court finds to be just under the circumstances of this case. 10
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 11 of 12 5. Defendants be required to pay over to BMW: (a) in accordance with Section 35(a) of the United States Trademark Act, 15 U.S.C. 1117(a), an award of treble Plaintiffs actual damages and Defendants profits, together with profits resulting from sales by Defendants relating to their aforesaid trademark infringement and unfair competition; (b) compensatory damages arising from Defendants breach of the Signed Agreement; and (c) BMW s reasonable attorneys fees and costs of this action. 6. Defendants, in accordance with Section 36 of the United States Trademark Act, 15 U.S.C. 1118, be required to deliver up to BMW for destruction all labels, signs, flags, prints, photographs, packages, bottles, receptacles, containers, business cards, letterhead, advertisements and other promotional materials in Defendants possession or control bearing BMW s Roundel logo, or any other BMW mark. 7. Defendants, in accordance with Section 34(a) of the United States Trademark Act, 15 U.S.C. 1116(a), be required to file with the Court, and serve upon BMW, within thirty (30) days after the entry and service on Defendants of an injunction, a report in writing and under oath, setting forth in detail the manner and form in which Defendants have complied with the terms of such injunction. 8. BMW recover such other relief as the Court may deem appropriate. 11
Case 4:14-cv-00510 Document 1 Filed in TXSD on 02/28/14 Page 12 of 12 Jury Trial Demand BMW demands trial by jury on all issues triable by a jury in this case. Dated: February 28, 2014 Respectfully submitted, JONES DAY s/joseph M. Beauchamp Joseph M. Beauchamp Texas Bar No. 24012266 S.D. Texas Bar No. 24263 717 Texas, Suite 3300 Houston, TX 77002-2712 Telephone: (832) 239-3939 Facsimile: (832) 239-3600 jbeauchamp@jonesday.com OF COUNSEL: John G. Froemming 51 Louisiana Avenue, N.W. Washington, D.C. 20001-2113 Telephone: (202) 879-3939 Facsimile: (202) 626-1700 jfroemming@jonesday.com Counsel for Plaintiffs 12