IP Law Daily, TRADEMARK—E.D.N.Y.: Preliminary injunction entered against Stanley Oil over GENERAL PETROLEUM marks, (Sep 12, 2024)

By Brian Craig, J.D.

The court found evidence of significant bad faith on the part of distributor Stanley Oil, including domain registration that shows an intent to confuse customers.

In a trademark infringement case brought by a Germany-based manufacturer of lubricants, General Petroleum GmbH, against its U.S.-based distributor, Stanley Oil & Lubricants, the federal district court in Brooklyn, New York has entered a preliminary injunction. The court concluded that General Petroleum showed a likelihood of success on claims for trademark infringement over the GENERAL PETROLEUM mark, trademark cancellation, trafficking in counterfeit goods, copyright infringement, and cybersquatting. The court also found evidence of significant bad faith, including domain registration that shows an intent to confuse customers, and evidence to support irreparable harm without an injunction ((General Petroleum GmbH v. Stanley Oil & Lubricants, Inc., No. 2:24-cv-02324-NRM-LGD (E.D.N.Y. Sept. 11, 2024)).

Germany-based General Petroleum GmbH is a manufacturer of automotive, industrial, and marine lubricants. In 2019, General Petroleum entered into a distribution agreement with Stanley Oil & Lubricants, Inc. (“Stanley Oil”), a New York-based distributor and manufacturer of lubricants. General Petroleum alleges that the distributor, Stanley Oil, is now manufacturing, importing, advertising, and distributing counterfeit and infringing products, under the guise that such products are General Petroleum’s legitimate products when they are not. General Petroleum sued Stanley Oil in New York federal district court for trademark infringement, trademark cancellation, trafficking in counterfeit goods, copyright infringement, cybersquatting, and related New York state law claims. General Petroleum moved for a preliminary injunction.

Likelihood of success. In analyzing whether to grant a preliminary injunction, the court concluded that General Petroleum showed a likelihood of success on claims for trademark infringement, trademark cancellation, trafficking in counterfeit goods, copyright infringement, and cybersquatting.

In support of both trademark infringement and cybersquatting, the court found evidence showing an intent to confuse consumers. Stanley Oil registered the domain names GENERALPETROLEUMINTL.COM, GENERALPETROLEUMINTL.DE, and GENERALPETROLEUMUSA.COM, which are nearly identical and certainly confusingly similar to the GENERAL PETROLEUM mark. Registration of the domain name with a German “.de” suffix—the same domain suffix as General Petroleum’s website—indicates an association with Germany, the country where General Petroleum is based but with which Stanley Oil has no apparent connection. This domain registration further evinces Stanley Oil’s intent to confuse customers seeking General Petroleum products into visiting its site. The court rejected Stanley Oil’s affirmative defenses of laches, acquiescence, and equitable estoppel. After discovering Stanley Oil’s use of the marks on counterfeit products and the registration of domain names, General Petroleum did not engage in unreasonable delay.

In support of copyright infringement, the court found that General Petroleum owns a registered copyright for its Petroleum Logo, consisting of a blue-and-green sphere encircling a gold core, and numerous examples of Stanley Oil using the logo on its products and websites.

Irreparable harm. The court also found that the German-based manufacturer will suffer irreparable harm without an injunction. General Petroleum will suffer from customer confusion along with harm to its goodwill and reputation. The likelihood that Stanley Oil will continue violating General Petroleum’s intellectual property establish irreparable harm that cannot be addressed through money damages.

Public interest and balance of hardships. The court also found the factors related to the public interest and balance of hardships support granting injunctive relief. The Second Circuit has long held that there is a strong interest in preventing public confusion. In trademark infringement cases where the court has already found a likelihood of success on the merits, it is unnecessary to weigh the balance of the hardships. As to the other claims, the potential harm to the distributor in restraining its trade in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to the reputation and goodwill of the plaintiff manufacturer.

Therefore, the court granted the motion and entered an order for the preliminary injunction.

The Case is No. 2:24-cv-02324-NRM-LGD.

Judge: Morrison, N.

Attorneys: Melanie A. Miller (Cozen O'Connor P.C.) for General Petroleum GmbH. Panagiota Betty Tufariello (Law Offices of P.B. Tufariello, PC) for Stanley Oil & Lubricants, Inc.

Companies: General Petroleum GmbH; Stanley Oil & Lubricants, Inc.

Cases: Copyright TechnologyInternet Trademark NewYorkNews