Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.
On November 14 2022, the United States Court of Appeals for the Ninth Circuit ruled in San Antonio Winery Inc v Jiaxing Micarose Trade Co Ltd (“Jiaxing”) that foreign parties to a trademark infringement complaint can be served by trademark owners within the U.S. because of s.1051(e) of the Lanham Act. Statutory interpretation of s.1051(e) in this case provides a new way to serve foreign defendants via the Director of the United States Patent & Trademark Office (“USPTO”). Specifically, Jiaxing provides that a foreign defendant may be served if they have filed an application for a conflicting trademark at the USPTO. This mitigates the traditional temporal, financial, and logistical challenges associated with preventing trademark infringement by foreign companies.
The Los Angeles-based (“San Antonio”) is known for their Stella Rosa brand that they have produced under the trademarks since 1998. They , a Chinese company, for registering the mark “RIBOLI” for wine pourers, bottle stands, containers, cocktail shakers, dishware, and other kitchen products. Jiaxing registered “RIBOLI” in 2018 for clothing and shoes and in 2020 for kitchen products. Accordingly, San Antonio filed a complaint for trademark infringement, trademark dilution, and false designation of origin. They are seeking an injunction against Jiaxing from using the “RIBOLI” mark, and an order to prohibit Jiaxing’s registrations.
The current route to service of foreign defendants is the Hague Convention, but San Antonio sought a faster and inexpensive way to serve Jiaxing. They did so under s. 1051(e) which allows U.S. residents to serve the foreign defendant’s O agent or the USPTO director in “proceedings” that affect the mark. The provision states that if the trademark applicant is not in the U.S., they can designate a person in the U.S. who may be served on their behalf regarding the marks; and if that person is not found then the USPTO director may be served.
Jurisprudence conflicts as to whether s.1051(e) is limited to USPTO proceedings or includes civil lawsuits. As such, the that held the provision only applies to administrative proceedings. The Ninth Circuit reversed this by interpreting that the words “proceedings affecting a trademark” are broad enough to include civil litigation. Since , the provision must encompass serving process for disputes in district court. The Court held that the wording only requires that it’s plain and ordinary meaning be taken. Moreover, since the Lanham Act grants courts the power to affect trademarks in other ways, s.1051(e)’s use of the word “process” must apply to court proceedings. Further, the word “process” cannot be understood as reference to administrative proceedings, and thus it would have been superfluous to include if it were not meant to also include civil proceedings.
Serving foreign defendants through s.1051(e) does not run contrary to the Hague Convention as it governs service amongst foreign countries whereas s.1051(e) governs service within the U.S without international transmittal of documents; which means it falls outside the scope of the convention.
Foreign infringers are increasingly popular and on marketplaces that verify IP ownership, such as Amazon. The decision is significant, in that it may act as a deterrent — it warns foreign companies that an application at the USPTO is all that is needed to be served a U.S. lawsuit. The Court’s adoption of the plain and ordinary meaning is akin to the starting point of statutory interpretation in this context in Canada — Driedger’s Modern Principle as adopted in Rizzo and Bell ExpressVu. This points to an expectation of similar results in Canadian courts, wherein a purposive analysis would be adopted to assess the ability of domestic trademark owners to serve foreign infringers.