UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA
November 18, 2010
SULZER MIXPAC USA, INC., A NEW HAMPSHIRE CORPORATION, AND SULZER MIXPAC AG, A SWISS CORPORATION, PLAINTIFFS,
TC DENTAL & MEDICAL SUPPLIES INC. D/B/A STARRYSHINE, A CALIFORNIA CORPORATION, AND SALLY L. CHENG, AN INDIVIDUAL, DEFENDANTS.
The opinion of the court was delivered by: Hon. James V. Selna United States District Court Judge
CONSENT DECREE AND PERMANENT INJUNCTION
CONSENT DECREE AND PERMANENT INJUNCTION
1. WHEREAS, the Plaintiffs, Sulzer Mixpac USA, Inc., and Sulzer Mixpac AG ("Plaintiffs") filed a complaint alleging, among other things, that TC Dental & Medical Supplies Inc. dba Starryshine and Sally L. Cheng (collectively, the "Defendants") have infringed its trademarks, trade dress and patents; and
2. WHEREAS, the Plaintiffs and Defendants (and collectively, the "Parties") having compromised their claims pursuant to a Settlement Agreement entered into contemporaneously herewith, now desire to settle the controversies between them, and they request entry of the following Stipulation of Facts and Consent Decree and Permanent Injunction.
3. NOW THEREFORE, based on consideration arising to the Parties, and in furtherance of the complaint and the exhibits, the Parties request that this Court accept and approve the requests of the Parties and find and order as follows:
4. This Court has jurisdiction over the subject matter and over the Parties to this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331 and 1338(a) & (b).
5. Sulzer Mixpac AG is the owner of U.S. Patent Nos. 5,918,772 and 6,186,363, and such patents are valid and enforceable.
6. U.S. Patent Nos. 5,918,772 and 6,186,363 are infringed by the mixing tips offered, advertised or sold by the Defendants.
7. The Mixpac Colored Dome Mark and Trade Dress for its mixing tips is distinctive, well known, non-functional and has acquired secondary meaning. Customers recognize the Mixpac Colored Dome Mark and Trade Dress as a indicator of source and purchase based on that look.
8. The mixing tips sold or offered for sale by Defendants infringe the Mixpac Colored Dome Mark and Trade Dress or U.S. Trademark Registration Nos. 3,762,232 and 3,762,233.
9. IT IS THEREFORE ORDERED that judgment be entered against the Defendants as to the First, Second, Third, Fourth, Seventh and Eighth Claims within Plaintiffs' complaint. The Plaintiffs hereby move this Court to dismiss without prejudice the Fifth and Sixth Claims within Plaintiffs' complaint.
10. IT IS ORDERED that Defendants TC Dental & Medical Supplies Inc. dba Starryshine, a California corporation, and Sally L. Cheng, an individual, as well as its principals, officers, members, agents, servants, employees, and those persons under their control or in active concert or participation with them who receive actual notice of this Order by personal service or otherwise, are hereby enjoined and permanently restrained from:
(i) making, using, importing, selling and/or offering for sale any mixing tips that infringe any claims of U.S. Patent Nos. 5,918,772 or 6,186,363;
(ii) selling, offering for sale, distributing or advertising any mixing tips that infringe U.S. Trademark Registration No. 3,762,232 or 3,762,233 or the Colored Dome Mark and Mixpac Trade Dress, or any colorable imitations thereof;
(iii) assisting, aiding, or abetting any other person or entity in engaging in or performing any of the activities described in paragraphs (i) through (ii) above.
11. Defendants hereby waive all rights of appeal.
12. IT IS ORDERED that this Decree constitutes a final judgment as to all claims asserted in this action by Plaintiffs against Defendants or by Defendants against Plaintiffs and the Parties shall pay their respective attorneys' fees and costs.
13. IT IS ORDERED that this Court retains jurisdiction for the purposes of making any further orders necessary or proper for the construction, modification or the enforcement of the Consent Decree and Permanent Injunction, or the Settlement Agreement between the Parties which is incorporated herein. If Defendants are alleged to have breached the terms of the Consent Decree and Permanent Injunction or the Settlement Agreement, Plaintiffs shall have the right to reopen this matter upon motion filed and heard on an expedited basis, subject to the Court's schedule and approval. If this matter is so reopened, Plaintiffs may pursue any and all remedies it may have against Defendants, and shall be entitled to recover its attorneys' fees and costs incurred in pursuing such breach of the terms of this Consent Decree and Permanent Injunction or Settlement Agreement.
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