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T.R.P. Company, Inc. v. Similasan AG

United States District Court, D. Nevada

March 27, 2019

T.R.P. COMPANY, INC., Plaintiff,
v.
SIMILASAN AG, et al., Defendants.

          ORDER

          C.W. HOFFMAN, UNITED STATES MAGISTRATE JUDGE.

         Presently before the court is plaintiff T.R.P. Company, Inc.'s motion for order issuing a letter (ECF No. 72), filed on August 29, 2018. Defendant Similasan AG filed a response (ECF No. 73) on September 12, 2018. Plaintiff filed a reply (ECF No. 74) on September 18, 2018.

         This case arises from allegations of trademark infringement. (Compl. (ECF No. 1).) Plaintiff alleges that it is the owner of a trademark for a homeopathic eye drop product known as PinkEyeRelief. (Id.) Plaintiff claims that defendant Similasan AG is a Swiss corporation that manufactures homeopathic remedies in Switzerland and sells the products in the United States through defendant Similasan Corporation. (Id.) Plaintiff further alleges that defendant Similasan AG used the name “Pink Eye Relief” for an eye drop product and then filed a United States trademark application for the product. (Id.) Plaintiff further alleges that the trademark application was denied due to the product's similarities to plaintiff's product. (Id.)

         Defendants then moved to dismiss the complaint, and moved for a protective order or limited stay of discovery pending the court's resolution of the motions to dismiss. (See Mot. to Dismiss (ECF Nos. 56, 57); Mot. for Protective Order (ECF No. 54).) On November 27, 2018, the court denied defendants' motion to dismiss. (Order (ECF No. 76).) The court then denied defendants' motion to stay discovery as moot. (Min. Order (ECF No. 94).)

         Plaintiff now moves for an order issuing a letter of request under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters to obtain physical evidence from defendant Similasan AG. Defendant Similasan responds that the court should deny plaintiff's request because discovery is not warranted, given the pending motion to dismiss and the motion to stay discovery. (Resp. (ECF No. 73).) Plaintiff replies that its motion is procedurally proper and that plaintiff is entitled to discovery. (Reply (ECF No. 74).)

         The March 18, 1970 Hague Convention on the Taking of Evidence Abroad in Civil and Criminal Matters (“Hague Convention”) is the “law of the United States” with the same effect and force of a federal statute. Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, art. 1, March 18, 1970, 3 U.S.T. 2555 (Oct. 7, 1972); see also Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for Southern Dist. of Iowa, 482 U.S. 522, 524 n.1 (1987). Signatories to the Hague Convention agree that a judicial authority in a contracting state may provide a letter of request to obtain evidence.[1] Hague Convention, art. 1, 3 U.S.T. 2555. Both the United States and Switzerland are signatories to the Hague Convention. “[A letter of request] shall not be used to obtain evidence which is not intended for use in judicial proceedings.” Id. Whether to issue the letter is within the discretion of the court. See Aerospatiale, 482 U.S. at 540-41. The court should first examine the facts of the case and the foreign sovereign's interests to determine whether the letter of request will be effective. Id. at 543-44.

         Here, plaintiff filed this action against defendants for trademark infringement arising from defendants' homeopathic eye drops. Plaintiff maintains that the letter is necessary because Swiss defendant Similasan AG has declined to voluntarily produce the requested evidence and contests personal jurisdiction in this action. Plaintiffs proposed letter lists its interrogatories and the documents plaintiff wishes for Similasan AG to produce. (ECF No. 72-1.) The interrogatories concern Similasan AG's trademark application, licensing and use of the eye drop product, the development of the product, and internal policies regarding the product. The discovery request raises Switzerland's sovereign interests, as the discovery is intrusive. However, discovery is inherently intrusive and without the information plaintiff seeks, this court will be unable to determine the merit of plaintiff s claims.

         Further, Similasan AG contests the issuance of such a letter because of the procedural posture of the case. The court notes that at the time plaintiff filed the instant motion, the court had not issued a ruling on defendants' motions to dismiss and motion to stay discovery. However, the court has since resolved the aforementioned motions. As such, Similasan AG's arguments are now moot. Accordingly, the court will grant plaintiffs motion.

         IT IS THEREFORE ORDERED that plaintiffs motion for order issuing a letter (ECF No. 72) is GRANTED. A signed copy of plaintiff s proposed request (ECF No. 72-1) is attached to this order.

         IT IS FURTHER ORDERED that plaintiff must file an updated translation of the letter attached to this order within seven days from the date of this order. Plaintiff must also submit certification that the translated letter is a true and correct translation. Upon receipt of the translated letter and the certification, the court will affix its signature to the translated letter.

         REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS TO OBTAIN RELEVANT PHYSICAL EVIDENCE AND TESTIMONY FROM SIMILASAN AG

         The Honorable Carl W. Hoffman, United States Magistrate Judge, of the District Court for the District of Nevada, presents his compliments to the Central Authority of the Canton of Aargau, Switzerland, and request international judicial assistance pursuant to the Hague Convention of 18 March 1970 on the Taking of Evidence in Civil or Commercial Matters, 23 U.S.T. 2555, T.I.A.S. No. 7444 (the “Hague Evidence Convention”), to obtain evidence to be used in the above-captioned civil proceeding before this Court. This Court has determined that it would further the interests of justice if Similasan AG provided documents in its possession and answers to narrowly tailored questions relevant to the issues in this case.

         This Request has been made upon the motion of Plaintiff and Counter-Defendant T.R.P. Company, Inc. (“TRP”), who has advised the Court that the evidence sought from Similasan AG as to the issues in this case is relevant and necessary for the due determination of the matters in dispute between the parties in this case involving violations of the Lanham Act, 15 U.S.C. § 1051, et seq. including trademark infringement, false designation of origin, false advertising, and unfair competition, as well as common law claims under Nevada law of tortious interference with business relations, commercial disparagement, and unfair competition. Having considered the submissions of the parties, this Court has found that this Request is necessary in the interests of justice and for the purpose of a full and fair determination of the matters in issue among the parties to the pending proceeding.

         SECTION I

         1. Sender

         Michael N. Feder

         Dickinson Wright PLLC

         8363 West Sunset Road, Suite 200

         Las Vegas, Nevada 89113-2210

         United States of America

         Daniel S. Silverman

         Venable LLP

         2049 Century Park East, Suite 2300

         Los Angeles, California 90067

         United States of America

         Meaghan H. Kent

         Venable LLP

         600 Massachusetts Ave., N.W.

         Washington, D.C. 20001

         United States of America

         As Authorized By:

         The Honorable Carl W. Hoffman

         United States Magistrate Judge

         District Court for the District of Nevada

         333 Las Vegas Blvd South

         Las Vegas, NV 89101

         2. The Receiving (Central Cantonal) Authority is:

         Gerichte Kanton Aargau

         Generalsekretariat

         Obere Vorstadt 40

         5000 Aarau

         Switzerland

         3. Persons to Whom the Executed Request is to be Returned

         Dr. Christian Oetiker, LL.M., Attorney at Law

         Vischer AG

         Aeschenvorstadt 4, CH-4010 Basel

         Email: coetiker@vischer.com

         Tel.: 58 211 33 00

         On behalf of:

         Daniel S. Silverman

         2049 Century Park East, Suite 2300

         Los Angeles, California 90067

         United States of America

         Email: dssilverman@venable.com

         Tel.: (310) 229-0373

         4. Specification of Date by Which the Requesting Authority Requires Receipt of the Response to the Letter of Request

         A response is requested as soon as possible, in order to ensure that the evidence may be obtained before the deadline for factual discovery to conclude, which has already been extended twice and is currently set for March 15, 2019.

         SECTION II

         In conformity with Article 3 of the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, the undersigned applicant has the honor to submit the following request:

         5. (a) Requesting Judicial Authority (Article 3(a))

         The Honorable Carl W. Hoffman

         United States Magistrate Judge

         District Court for the ...


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