Novartis Animal Health US, Inc. v. Abbeyvet Exp. Ltd.

Novartis Animal Health US, Inc. v. Abbeyvet Exp. Ltd.

Opinion

 [***1958]   [*265]  OPINION AND ORDER

GERARD E. LYNCH, District Judge:

In this Lanham Act action for trademark infringement, Novartis Animal Health US, Inc. ("Novartis-USA"), the American affiliate of Novartis A.G., a manufacturer of veterinary pharmaceuticals, moves for a preliminary injunction against defendant Abbeyvet Export Ltd. ("Abbeyvet"), d/b/a/ Flea Control Online, a British firm that markets similar products via the Internet. ¹ [**2]  There is no genuine dispute about the essential fact that Abbeyvet sells "gray market" products -- genuine Novartis drugs, sold in their authentic, original packaging, but designed for the British market -- to United States consumers. ² Novartis-USA argues that the likelihood of consumer confusion resulting from certain variations between the U.S. and U.K. products warrants an injunction. Its motion will be granted.

] A plaintiff is entitled to a preliminary injunction upon a showing of irreparable  [*266]  harm and a likelihood of success on the merits. Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 145 (2d Cir. 2003). Irreparable [***1959]  harm and the likelihood of success are presumed in trademark infringement cases once the plaintiff has shown a likelihood of confusion. New Kayak Pool Corp. v. R & P Pools, Inc., 246 F.3d 183, 185 (2d Cir. 2001). Thus, Novartis-USA will be entitled to an injunction if it can establish a likelihood of confusion.

Novartis-USA [**3]  has met its burden. There is no dispute that as the U.S. licensee of Novartis A.G., the owner of the marks, Novartis-USA holds valid trademarks for the terms "Novartis" and "Program" in connection with pet medicines. The only issue in the case is whether defendant's sale of British versions of the same medicines, using the same marks, will likely confuse U.S. consumers.

] Ordinarily, trademark infringement and the likelihood of confusion is determined by application of the nine "Polaroid factors." See Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961). This complex assessment, though, is not useful in the context of gray market goods, since such goods typically utilize the exact same marks, sold in the original packaging legitimately obtained from the manufacturer. See Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 74 (2d Cir. 1987) (Cardamone, J., concurring) (stating that the traditional consumer confusion test is difficult to apply for "gray goods"). In this case, for example, Abbeyvet's Internet sales involve genuine Novartis pharmaceuticals, obtained from the British affiliate of Novartis A.G. They [**4]  are neither counterfeit goods nor goods masquerading as genuine by adopting confusingly similar marks; they use the actual marks and the marks are lawfully affixed to them. ] Under these circumstances, courts have adopted a simpler test, finding a likelihood of confusion if: (1) the goods were not intended to be sold in the United States, and (2) they are materially different from the goods typically sold in the United States. Id. at 73; Curtis v. Nat'l Wholesale Liquidators, Inc., 890 F. Supp. 152, 158 (E.D.N.Y. 1995). "[A] material difference between goods simultaneously sold in the same market under the same name creates a presumption of consumer confusion as a matter of law." Societe des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992).

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