Global Protection v. Arthur - Complaint

Case 1:18-cv-10966 Document 1 Filed 05/14/18 Page 1 of 9
UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS
GLOBAL PROTECTION CORP. and

KAREX BERHAD SDN BHD
Plaintiffs, C.A. No.: 18-CV-10966
v.
ERIC J. ARTHUR individually and d/b/a MSCI,

and MARKETING SALES CONCEPTS, INC.;
and MSC OF FORT SMITH, INC. d/b/a MSCI
AND WORLD PROTECTION
Defendants.
COMPLAINT AND JURY DEMAND
Introduction
This is an action for trademark infringement, patent infringement and unfair competition
in violation of the Patent Laws of the United States, 35 U.S.C. §101 et seq., the Federal
Trademark Act of 1946 (the “Lanham Act”) and common law. This action arises from
defendants’ infringement of plaintiffs’ registered trademark and design patent. Plaintiffs seek
damages as well as preliminary and permanent injunctive relief.
Jurisdiction and Venue
1. This Court has original jurisdiction over the parties and the subject matter of this
action pursuant to 28 U.S.C. §§1331 and 1338.
2. Venue is proper in this district pursuant to 28 U.S.C. §1391 and 1400.
Parties
2503323v4/19253-1
3. Plaintiff Global Protection Corp. (“Global”) is a corporation organized and
existing under the laws of the Commonwealth of Massachusetts with a principal place of
business in Boston, Massachusetts.
4. Plaintiff Karex Berhad SDN BHD (“Karex”) is a corporation organized and
existing under the laws of Malaysia with a principal place of business in Selangor, Malaysia.
5. Defendant MSC of Fort Smith, Inc. d/b/a MSCI and World Protection (“MSCI”)
is, upon information and belief, a corporation organized under the laws of Arkansas, with a place
of business in Fort Smith, Arkansas.
6. Defendant Eric J. Arthur (“Arthur”) is, upon information and belief an individual
residing in Fort Smith, Arkansas and the principal owner, and the incorporator and organizer, of
defendant MSCI. Upon information and belief, Arthur does, or has done, business as Marketing
Sales Concepts, Inc. and MSCI.
Facts
7. Global manufactures and distributes condoms and reproductive health aids. The
company was founded by two Tufts University students in 1988. Global has since grown to be
an industry leader and is diligent about protecting its brands.
8. Karex manufactures and distributes condoms and reproductive health aids
throughout the world. Karex owns a majority interest in Global and acts as a supplier to
it.
The “ONE” Mark
9. Global owns several federally registered marks, including, the mark “ONE” for
use with condoms (U.S. Reg. No. 3,055,315, see USPTO TESS registration attached as Exhibit
-2-
2503323v4/19253-1
A) (the “ONE Mark”). The “ONE” brand is a leading condom brand. Global has developed
substantial good will and public recognition through its use and promotion of its ONE Mark.
10. Global’s registration of its ONE Mark is valid, subsisting, unrevoked, uncancelled
and incontestable, and confers upon Global an exclusive right to use the “ONE” name and mark
in commerce in connection with condoms. Global has invested substantial sums of money in
marketing its products under the ONE name and otherwise promoting the ONE Mark.
11. As a result of Global’s extensive promotion, advertising, and sale of its services,
the ONE name and mark have become well and favorably known to the public.
The ‘275 Patent
12. Karex is the owner of United States Design Patent No. D722,275 (copy attached
as Exhibit B), entitled “Foil Package for Condom” (the “‘275 Patent”). Both Global and Karex
offer products using the ‘275 Patent design, and the distinctive packaging design is widely
associated with their products. The innovative design protected by the ‘275 Patent includes the
following:
13. Karex’ ‘275 Patent is presumed valid.
The Infringing Product
-3-
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14. Defendants MSCI and Arthur sell and market condoms in round foil packaging
using the design disclosed and claimed in the ‘275 Patent and bearing the mark “1” as shown
below:
-4-
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15. The infringing MSCI condom products are offered for sale, sold, and marketed by
defendants throughout the United States, including in this judicial district.
16. The defendants have adopted the confusingly similar mark “1” and copied the
‘275 Patent design and for their condom products. By their use of the “1” mark and ‘275 Patent
design in connection with the manufacture, importation, distribution, promotion and sale
defendant have and continue to infringe on both Global’s ONE Mark and the ‘275 Patent.
17. Defendants’ use of the Mark “1” in connection with the sale of condoms is a
colorable imitation of Global’s ONE Mark.
18. The defendants’ use of the “1” Mark, and copying of the ‘275 Patent design, is
likely to cause confusion, to cause mistake and/or to deceive purchasers of condoms.
19. Upon information and belief, one or more of the defendants have actual notice of
plaintiffs’ ownership of the Mark and the ‘275 Patent. In addition, the defendants have actual or
constructive knowledge that the use of the mark “1” infringes Global’s One Mark and that their
packaging infringes the ‘275 Patent.
COUNT I
(Federal Trademark Infringement and Unfair Competition – 15 U.S.C. §1114)
20. Global incorporates by reference herein the allegations in each and every other
paragraph of this Complaint.
21. Defendants have willfully infringed Global’s rights in the ONE Mark by various
acts, including the sale and marketing of condoms under the mark “1”.
22. Defendants’ use of the Mark “1” is without the permission or authority of Global.
23. Defendants’ use of the Mark “1” has, and is likely to, continue to cause confusion
or mistake and/or to deceive.
-5-
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24. Defendants’ actions have caused and/or will cause damage to the business,
reputation, and good will of Global. In addition, defendants’ actions dilute the distinctive quality
and strength of Global’s “ONE” Mark.
25. Defendants’ actions constitute violations of 15 U.S.C. §1114, and have caused
and continue to cause Global to suffer damage and irreparable injury.
COUNT II
(Common Law Trademark Infringement and Unfair Competition)
27. The acts of the defendants constitute common law trademark infringement of
Global rights in the Mark, and unfair competition with Global.
28. Defendants’ use of the name Mark “1”, has and is likely to deceive the public into
believing that services and/or products sold by the defendants are Global branded products and
services.
29. Defendants’ acts have caused and will continue to cause damage and irreparable
injury to Global’s business, reputation and good will. Further, defendants’ acts dilute the
distinctive quality and strength of Global’s Mark.
COUNT III
(False Designation of Origin – 15 U.S.C. §1125)
30. Global incorporates by reference herein each of the allegations in each and every
other paragraph of this Complaint.
-6-
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31. Defendants’ use of the designation “1” constitutes false designation of origin and
false descriptions and representation in connection with services which are likely to cause
confusion or mistake in violation of 15 U.S.C. §1125.
32. As a result of defendants’ violation of 15 U.S.C. §1125, Global has suffered and
continues to suffer damage and irreparable injury.
COUNT IV
(Unjust Enrichment)
34. Defendants have unjustly benefited and profited from their infringement of the
ONE Mark. Defendants’ acts constitute and have resulted in unjust enrichment.
COUNT V
(Infringement Under 35 U.S.C. §271 of the ‘275 Patent)
35. Karex incorporates by reference the allegations set forth in each and every other
36. Defendants, without authorization from Karex have made, used, offered for sale,
sold, and/or imported in or into the United States, and continue to make, use, offer for sale, sell,
and/or import in or into the United States, condom in packaging having designs that infringe the
‘275 Patent.
37. Karex has been and will continue to be irreparably harmed by defendants’
infringements of the ‘275 Patents.
-7-
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PRAYERS FOR RELIEF
WHEREFORE, plaintiffs Global and Karex request that this Court enter judgment in its
favor as follows:
(i) Enter a preliminary, and thereafter permanent, injunction against defendants
Arthur and MSCI enjoining them from:
(a) using the designation or word “1”, or similar derivative names in
connection with the importation, advertising, sale, or offering for sale of condoms or related
products;
(b) otherwise infringing Global’s ONE Mark; and
(c) infringing the ‘275 Patent;
(ii) Enter a preliminary, and thereafter permanent, injunction ordering defendants
Arthur and MSCI to destroy or eliminate:
(a) all infringing materials containing the infringing “1” mark in connection with
the advertising, sale, or offering for sale of the condoms; and
(b) all product with packaging that infringes the ‘275 Patent;
(iii) Award plaintiff Global damages as a result of defendants’ acts, together with
double or treble damages and attorneys’ fees and costs pursuant to 28 U.S.C. §1117;
(iv) Award plaintiff Karex damages for infringement of the ‘275 Patent, together with
enhanced damages and attorneys’ fees and costs pursuant to 35 U.S.C. § 284; and
(vi) Award plaintiffs such other and further relief as is just and proper.
-8-
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JURY DEMAND
Plaintiffs demand a jury trial on all issues so triable.
GLOBAL PROTECTION CORP. and KAREX

BERHAD SDN BHD
By its attorneys,
/s/ Gary W. Smith

Gary W. Smith, BBO#550352
Posternak Blankstein & Lund LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199
Tel: (617) 973-6100
[email protected]
Dated: May 14, 2018
CERTIFICATE OF SERVICE
I, Gary W. Smith, hereby certify that on this 14th day of May 2018, I caused a copy of the
attached to be served electronically, through the ECF system. Paper copies will be sent to those
indicated as non-registered participants of the ECF system.
/s/Gary W. Smith
Gary W. Smith
-9-
2503323v4/19253-1
Case 1:18-cv-10966 Document 1-1 Filed 05/14/18 Page 1 of 1
JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference ofthe United States in September 1974, is required for the use of the Clerk ofCourt for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXTPAGE OF THIS FORM)
I.(a) PLAINTIFFS DEFENDANTS

Global Protection Corp. and Karex Berhad SDN BHD Eric J. Arthur d/b/a MSCI and Marketing Sales Concepts, Inc., et al
(b) County ofResidence ofFirst Listed Plaintiff Suffolk County ofResidence of First Listed Defendant Fort Smith, Arkansas
( EXCEPTIN U.S. PLAINTIFF CASES) ( IN US. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
Telephone Number) Attorneys (IfKnown)

Poq?ertialtYasnUtnein'digiE14
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617-973-6277
II. BASIS OF JURISDICTION (Place an "X"in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an "X" in One Boxfor Plaintiff
( For Diversity Cases Only) and One Boxfor Defendant)
O 1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 0 1 O 1 Incorporated or Principal Place 0 4 04
ofBusiness In This State
O 2 U.S. Government 04 Diversity Citizen of Another State 0 2 0 2 Incorporated and Principal Place 0 5 05
Defendant (Indicate Citizenship ofParties in Item III) ofBusiness In Another State
Citizen or Subject ofa 0 3 O 3 Foreign Nation 11 6 06

Foreign Country
IV. NATURE OF SUIT(Place an "X" in One Box On Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
0 110 Insurance PERSONAL INJURY PERSONAL INJURY 0 625 Drug Related Seizure 0 422 Appeal 28 USC 158 0 375 False Claims Act
0 120 Marine 0 310 Airplane 0 365 Personal Injury - ofProperty 21 USC 881 0 423 Withdrawal 0 376 Qui Tam(31 USC
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Student Loans 0 340 Marine Injury Product New Drug Application 0 470 Racketeer Influenced and
(Excludes Veterans) 0 345 Marine Product Liability M 840 Trademark Corrupt Organizations
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0 362 Personal Injury - Product Liability 0 751 Family and Medical 0 893 Environmental Matters
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IK1 Original 0 2 Removed from 0 3 Remanded from 0 4 Reinstated or 0 5 Transferred from a 6 Multidistrict 0 8 Multidistrict
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Cite the U.S. Civil Statute under which you are filing(Do not citejurisdictional statutes unless diversity)
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VI. CAUSE OF ACTION Brief description of cause:
VII. REQUESTED IN [71 CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: 18( Yes CI No
VIII. RELATED CASE(S)

(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD

05/14/2018 /s/Gary Smith
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING 1FP JUDGE MAG. JUDGE

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS
1. Title of case(name of first party on each side only) Global Protection Corp. v. Eric J. Arthur
2. Category in which the case belongs based upon the numbered nature of suit code listed on the civil cover sheet. (See local
rule 40.1(a)(1)).
I. 410,441, 470, 535, 830*, 835*, 891, 893, 895, R.23, REGARDLESS OF NATURE OF SUIT.
v II. 110, 130, 140, 160, 190, 196, 230, 240, 290,320,362, 370, 371, 380, 430, 440,442,443, 445, 446, 448, 710, 720,
740, 790, 820*, 840*, 850, 870, 871.
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899, 950.
*Also complete AO 120 or AO 121. for patent, trademark or copyright cases.
3. Title and number, if any, of related cases. (See local rule 40.1(g)). If more than one prior related case has been filed in this
district please indicate the title and number of the first filed case in this court.
4. Has a prior action between the same parties and based on the same claim ever been filed in this court?
YES NO v
5. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest? (See 28 USC
§2403)
YES NO v
If so, is the U.S.A. or an officer, agent or employee of the U.S. a party?
YES NO 7
6. Is this case required to be heard and determined by a district court of three judges pursuant to title 28 USC §2284?
YES NO v
7. Do all of the parties in this action, excluding governmental agencies of the United States and the Commonwealth of
Massachusetts ("governmental agencies"), residing in Massachusetts reside in the e division? - See Local Rule 40.1(d)).
YES NO IV
A. If yes, in which divis' o all of the non-governmental arties reside?
Eastern Division Central Division I Western Division
B. If no, in which division do the majority of the plaintiffs or the only parties, excluding governmental agencies,
residing in Massachusetts reside?
Eastern Division v Central Division ri Western Division
8. If filing a Notice of Removal - are there any motions pending in the state court requiring the attention of this Court? (If yes,
submit a separate sheet identifying the motions)
YES NO
(PLEASE TYPE OR PRINT)

ATTORNEY'S NAME Gary Smith
ADDRESS Posternak Blankstein & Lund LLP /The Prudential Tower/800 Boylston St. Boston, MA 02199
TELEPHONE NO. 617-973-6277
(CategoryForm6-2017.wpd )
EXHIBIT A
5/11/2018 Trademark Electronic Search System (TESS)
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TSDR ASSIGN Status TTAB Status

(Use the "Back" button of the Internet Browser to return to
TESS)
ONE
Word Mark ONE

Goods and Services IC 010. US 026 039 044. G & S: Condoms. FIRST USE: 20040211. FIRST USE IN COMMERCE:
20040211
Standard Characters
Claimed
Mark Drawing Code (4)STANDARD CHARACTER MARK
Serial Number 78570162
Filing Date February 17, 2005
Current Basis 1A
Original Filing Basis 1A
Published for Opposition November 8, 2005
Registration Number 3055315
International Registration 0948390
Number
Registration Date January 31, 2006
Owner (REGISTRANT)Global Protection Corp. CORPORATION MASSACHUSETTS 12 Channel Street
Boston MASSACHUSETTS 02210
Attorney of Record Emilia F. Cannella
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8(6-YR). SECTION 8(10-YR) 20160322.
Renewal 1ST RENEWAL 20160322
Live/Dead Indicator LIVE
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:uox1k9.4.52 1/2
5/11/2018 Trademark Electronic Search System (TESS)
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EXHIBIT B
11111111111111111111111111111111111111111111111111111111111111
(12) United States Design Patent (10)Patent No.: US D722,275 S
Lee (45) Date of Patent: ** Feb. 10,2015
(54) FOIL PACKAGE FOR CONDOM FOREIGN PATENT DOCUMENTS
(71) Applicant: Line One Laboratories Inc.(USA), DE 19610791 Al 10/1996

Chatsworth, CA(US) OTIIER PUBLICATIONS
(72) Inventor: Budiman Lee,Chatsworth,CA(US) Gold Circle Round Condom Container Not Tin Full Exc. www.
worthpoint.com. Publication date unknown. ‹Ittp://www.
(73) Assignee: Line One Laboratories Inc.(USA), worthpoint.com/worthopedia/gold-circle-round-condom-container-
Chatsworth, CA(US) 153274949>.
(**) Term: 14 Years Primary Examiner-Caron D Veynar
Assistant Examiner-Abraham Bahta
(21) Appl. No.: 29/472,192
(74) Attorney, Agent, or Firm-Danton K. Mak
(22) Filed: Nov.8,2013
(51) LOC(10)Cl. 09-05
(52) U.S. Cl. (57) CLAIM
USPC D9/703 The ornamental design of the foil package for condom, as
(58) Field of Classification Search shown and described.
USPC D9/702-714,695 699, 720 722,414,
D9/424, 426, 416,428; 206/484, 438;
222/143, 92, 107; 383/127, 37, 38, DESCRIPTION
383/103, 107, 113, 61.1, 9, 15-16, 906;
68/17 R, 12.18, 207; D27/183, 185; FIG.1 is a perspective view ofthe foil package for condom of
D24/115, 224, 118; 604/231, 217; the present invention;
229/72, 200, 87.06, 87.08, 87.05; FIG.2 is a front side view ofthe package ofFIG. 1,the rear
D28/8.1; D7/601,605,608,611 side, left side and right side views being identical thereto;
See application file for complete search history. FIG.3is a top plan view ofthe package ofFIG.1,the bottom
plan view being identical thereto;
(56) References Cited FIG.4 is an alternate front side view ofthe package ofFIG.1,
showing the peripheral lip portion of the package partially
11.S. PASENT DOCUMENTS
deformed;
118,989 A 9/1871 Twhjtcmg FIG.5 is a perspective view ofan alternate embodiment ofthe
269,374 A 12/1882 Ballaed foil package for condom ofthe present invention;
298,199 A 5/1884 Hawkins FIG.6 is a front side view ofthe package ofFIG. 5;
354,017 A 12/1886 Helm FIG.7 is a rear side view ofthe package ofFIG. 5;
368,026 A 8/1887 Spelman
453,681 A 6/1891 Wagner FIG.8 is a left side view of the package of FIG.5, the right
2,390,900 A 12/1945 Schmid side view being a mirror image thereof; and,
3,282,414 A 11/1966 Penksa FIG.9is a bottom plan view ofthe package ofFIG.5,the top
4,289,232 A 9/1981 Seibel plan view being a mirror image thereof.
4,875,491 A 10/1989 Parrone
(Continued) 1 Claim,4 Drawing Sheets
US D722,275 S
Page 2
(56) References Cited 6,718,983 B1 4/2004 Suzuki

D630,897 S * 1/2011 Jarvis et al. D7/407
U.S. PATENT DOCUMENTS D679,990 S * 4/2013 O'Brien et al. D9/428
D685,652 S * 7/2013 English et al. D9/732
5,666,972 A 9/1997 Gifford D687,705 S * 8/2013 Krupa D9/428
D407,640 S * 4/1999 Nelson et al. D9/710 8,646,451 B2 2/2014 Mistier
6,007,836 A 12/1999 Denzer D705,051 S * 5/2014 Cassens et al. D9/429
6,089,231 A 7/2000 Thompson 2010/0078032 Al 4/2010 Sarros
D445,674 S * 7/2001 Pritchett D9/707 2013/0092563 Al 4/2013 Wedel et al.
D462,900 S * 9/2002 Yamada et al. D9/707
D469,350 S * 1/2003 Zettlemoyer et al. D9/428 * cited by examiner
U.S. Patent Feb. 10,2015 Sheet 1 of4 US D722,275 S
iii; I( l i / I \
\ \ \ -/ l )
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U.S. Patent Feb. 10, 2015 Sheet 2 of4 US D722,275 S
1-Igi 3
TLI
U.S. Patent Feb. 10,2015 Sheet 3 of 4 US D722,275 S
\
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U.S. Patent Feb. 10, 2015 Sheet 4 of 4 US D722,275 S
igi9
503994071 09/07/2016
PATENT ASSIGNMENT COVER SHEET
Electronic Version v1.1 EPAS ID: PAT4040728

Stylesheet Version v1.2
SUBMISSION TYPE: NEW ASSIGNMENT

NATURE OF CONVEYANCE: ASSIGNMENT
CONVEYING PARTY DATA

Name Execution Date
LINE ONE LABORATORIES INC. 08/30/2016
RECEIVING PARTY DATA

Name: KAREX INTERNATIONAL SDN. BHD.
Street Address: LOT 594, PERSIAMARAN RAJA LUMU, PANDAMARAN INDUSTRIAL
ESTATE
Internal Address: 42000 PORT KLANG
City: SELANGOR
State/Country: MALAYSIA
PROPERTY NUMBERS Total: 5

Property Type Number
Application Number: 29472192
CORRESPONDENCE DATA
Fax Number: (617)502-5002
Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
using a fax number,if provided;if that is unsuccessful, it will be sent via US Mail.
Phone: 617-248-5000
Email: [email protected]
Correspondent Name: CHOATE HALL & STEWART LLP-PATENT DOCKET
Address Line 1: TWO INTERNATIONAL PLACE
Address Line 4: BOSTON, MASSACHUSETTS 02110
ATTORNEY DOCKET NUMBER: 2011626-0002

NAME OF SUBMITTER: JOHN J. CAHILL
SIGNATURE: /John J. Cahill/
DATE SIGNED: 09/07/2016
Total Attachments:5
source=Line One to Karex Assignment of Patents#page1.tif
PATENT
503994071 REEL: 039659 FRAME: 0837
source—Line One to Karex Assignment of Patents#page2.tif
source-Line One to Karex Assignment of Patents#page3.tif
source—Line One to Karex Assignment of Patents#page4.tif
source-Line One to Karex Assignment of Patents#page5.tif
PATENT
REEL: 039659 FRAME:0838
ASSIGNMENT OF PATENTS
AND APPLICATION FOR PATENTS
THIS ASSIGNMENT OF PATENTS AND APPLICATION FOR PATENTS (this
"Assignment") is made this 30 day of August, 2016, by and between Line One Laboratories Inc.
(USA), a California corporation ("Assignor"), and Karex International Sdn. Bhd., an entity
incorporated in Malaysia and a wholly owned subsidiary of Karex Berhad ("Assignee"; each a
"Party," and collectively, the "Parties").
W ITNESSETH:
WHEREAS,Assignor and Assignee are parties to that certain Asset Purchase Agreement
and Bill ofSale,dated as ofthe date hereof(the "Asset Purchase Agreement"),pursuant to which,
among other things, Assignor agreed to assign, and thereby assigned, to Assignee all of its right,
title and interest in, to and under the patents and patent applications set forth on Schedule A and
the inventions therein (collectively, the "Patents");
WHEREAS, Assignor is the owner and has the full and exclusive right, by assignment or
otherwise, in the Patents as set forth on Schedule A; and
WHEREAS,Assignor desires to transfer all right, title and interest in, to and under the
Patents to Assignee and Assignee desires to acquire all such right, title and interest in, to and
under the Patents.
NOW,THEREFORE,for good and valuable consideration, the receipt and sufficiency of

which is hereby acknowledged, and as more fully set forth in the Asset Purchase Agreement and
subject to the terms and conditions therein, Assignor and Assignee intending to be legally bound,
agree as follows:
1. Assignor hereby sells, assigns, transfers, conveys and delivers unto Assignee, its
successors, assigns, and legal representative, all right, title and interest in and to the Patents and
in any and all Letters Patent which may be granted therefor in the United States and its territorial
possessions and in any and all foreign countries and any and all subsequent applications based
thereon including any and all divisions, continuation's, substitutions, renewals, reexaminations,
and reissues and other applications, for example that claim priority to the Application thereof
together with the right ofpriority under the International Convention for the Protection of
Industrial Property, Inter-American Convention relating to Patents, Designs and Industrial
Models, and any other international agreements to which the United States of America adheres,
to be held and enjoyed by Assignee to the full end ofthe term for which said letters patent may
be granted, as fully and entirely as the same would have been held and enjoyed by Assignors had
this assignment and sale not been made,
2, Assignor hereby agrees to sign all necessary papers and do all lawful acts
reasonably requested by Assignee and reasonably required in connection with the prosecution,
assignment, enforcement and disclaimer ofeach and every Patent and each and every patent
application based upon the Patents, without further compensation, but at the sole expense of
Assignee or its successors and assigns, and Assignor hereby assigns to Assignee all rights to sue
,PATENT
REEL: 039659 FRAME: 0839
for infringement, including past infringement if any, of any Patent or patent based upon or
corresponding to the Patents. Assignor hereby authorizes and requests the officials of all
countries in which the Patents are now or in the future will be issued to issue to Assignee all of
Assignor's right, title and interest in and to the same for the sole use and enjoyment ofAssignee,
its successors and assigns.
3. The Assignor and the Assignee agree that this Assignment is subject to the terms
and conditions ofthe Asset Purchase Agreement,including without limitation the
representations, warranties, covenants, exclusions and indemnities set forth therein, and that this
Assignment shall not be deemed to limit, enlarge or extinguish any obligation ofthe Assignor or
the Assignee under the Asset Purchase Agreement, all of which obligations shall survive the
delivery ofthis Assignment in accordance with the terms ofthe Asset Purchase Agreement In
the event ofany conflict or inconsistency between the terms ofthe Asset Purchase Agreement
and the terms hereof, the terms ofthe Asset Purchase Agreement shall govern.
4. This Assignment shall be governed by and construed in accordance with the

internal laws ofthe State of California applicable to agreements executed and to be performed
solely within such State. Any judicial proceeding arising out ofor relating to this Assignment
shall be brought in the courts of the State of California, and, by execution and delivery ofthis
Assignment, each of the parties to this Assignment accepts the exclusive jurisdiction ofsuch
courts, and irrevocably agrees to be bound by anyjudgment rendered thereby in connection with
this Assignment. Any provision ofthis Assignment may be amended or waived if, but only if,
such amendment or waiver is in writing and is signed, in the case of an amendment, by each
Party, or in the case ofa waiver, by the Party against whom the waiver is to be effective. No
failure or delay by any Party in exercising any right, power or privilege hereunder shall operate
as a waiver thereof nor shall any single or partial exercise thereof preclude any other or further
exercise thereof or the exercise of any other right, power or privilege.
5, EACH OF THE PARTIES HEREBY IRREVOCABLY WAIVES ANY AND

ALL RIGHT TO TRIAL BY JURY IN ANY LEGAL PROCEEDING ARISING OUT OF OR
RELATED TO THIS ASSIGNMENT.
6. This Assignment may be signed in any number of counterparts, each ofwhich

shall be an original, with the same effect as ifthe signatures thereto and hereto were upon the
same instrument. This Assignment shall become effective when each Party shall have received a
counterpart hereof signed by the other Parties. Until and unless each Party has received a
counterpart hereofsigned by the other Parties, this Assignment shall have no effect and no Party
shall have any right or obligation hereunder(whether by virtue of any other oral or written
agreement or other communication).
[SIGNATUREPAGESFOLLOW]
PATENT
REEL: 039659 FRAME: 0840
IN WITNESS WHEREOF,Assignor and Assignee have caused this Assignment to be to

be duly executed by their respective authorized officers as ofthe day and yearfirst above
written.
LINE ONE LABORAT
By:
Name:
Title: rea-5;..0 v4,7
KAREX INTERNATIO,NAL SDN.BHD.
By:
Name: qen:91 /</irr
Title: 21,,ez-eroz,
PATENT
REEL: 039659 FRAME: 0841
SCHEDULE A
Patents
TITLED PATENT PILING COUNTRY

OWNER APPLICATION PATENT NUMBER TITLE DATE ISSUE DATE STATUS
REGION
NUMBER
Line One Foil Package for
Laboratories 29/472,192 D722,275 Condom(Round) Nov.8, 2013 Feb. 10,2015 United States Patented Case
Inc.(USA)
Line One Foil Package for Patented Case

Laboratories 201430394425,6 ZL201430394425.6 Condom (Round) Oct. 17, 2014 May 20, 2015 China Annuity due
Inc.(USA) Oct. 17, 2016
Line One Condom Package Patented Case

Laboratories 14-01120-0102 14-01120-0102 (Round) Sept. 3,2014 Dec. 7,2015 Malaysia 5-year Renewal
Inc.(USA) due Sept. 3, 2019

Laboratories 14.01121-0202 14-01121.0202 (Round) Sept. 3,2014 Dec. 7, 2015 Malaysia 5-year Renewal
Inc.(USA) due Sept. 3,2019

Laboratories 4037749 4037749 (Round) Oct. 15, 2014 Nov. 28, 2014 United 5 year Renewal
Inc.(USA) Kingdom
due Oct. 15, 2019

Laboratories 4037748 4037748 (Heart) Oct. 15, 2014 Nov, 28,2014 United 5 year Renewal
Inc.(USA) Kingdom
due Oct. 15, 2019
Line One Patented Case

Laboratories 201430394352,0 ZL201430394352.0 Foil Package for October 17, July 15, 2015
Condom (Heart) 2014 China Annuity due
Inc,(IJSA) Oct. 17, 2016

Laboratories 14-01119-0202 MY 14-01119-0202 Condom Package April 18,2014
(Heart) Dec. 23,2015 Malaysia Renewal due
Inc.(USA) Apr. 18, 2019

Laboratories 14-01118-0102 MY 14-01118-0102 Condom Package April 18,2014
(Heart) Dec. 23,2015 Malaysia Renewal due
Inc.(USA) Apr. 18, 2019

Laboratories 14/191,148 9,248,045 Dispensing System Apr. 26,2014 Feb. 2,2016 • United States
Inc,(USA) Maintenance
5er fee
due Aug. 2,2019

Laboratories 13/230,602 8,256,609 Dispensing System Sept, 12, 2011 7,5 Year
Sept.4, 2012 United States
Inc.(USA) fee
due Mar. 4, 2020
Line One Dispensing System Patented Case

Laboratories 201120564282.X ZL201120564282,X (Utility Model) Dec. 29, 2011 Dec.12, 2012 China 5th Year Annuity
Inc.(USA) due
Dee, 29,2016
Line One Dispensing System Patented Case

Laboratories EP20110009043 EP2567679 Nov. 15, 2011 Aug. 5,2015 Europe Validated in the
Inc.(USA) United Kingdom
PATENT .
REEL: 039659 FRAME:0842

Laboratories EP20110009043 EP2567679 Dispensing System Nov, 15, 2011 Aug. 5, 2015 United Annuity due
Inc.(USA) Kingdom Nov. 15, 2016
Line One
Laboratories 29/504,592 Heart Shaped October 7,
13726,547 Condom Package 2014 April 14,2015 United States Patented Case
Inc,(USA
Line One
Laboratories 29/488,472 D720,213 Heart Shaped April 18,2014 December 30,
Condom Package 2014 United States Patented Case
Inc.(USA
PATENT
RECORDED:09/07/2016 REEL: 039659 FRAME: 0843

Global Protection v. Arthur - Complaint

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Case 1:18-cv-10966 Document 1 Filed 05/14/18 Page 1 of 9

UNITED STATES DISTRICT COURT

GLOBAL PROTECTION CORP. and

ERIC J. ARTHUR individually and d/b/a MSCI,

COMPLAINT AND JURY DEMAND

damages as well as preliminary and permanent injunctive relief.

Jurisdiction and Venue

action pursuant to 28 U.S.C. §§1331 and 1338.

2. Venue is proper in this district pursuant to 28 U.S.C. §1391 and 1400.

3. Plaintiff Global Protection Corp. (“Global”) is a corporation organized and

business in Boston, Massachusetts.

4. Plaintiff Karex Berhad SDN BHD (“Karex”) is a corporation organized and

of business in Fort Smith, Arkansas.

Sales Concepts, Inc. and MSCI.

an industry leader and is diligent about protecting its brands.

8. Karex manufactures and distributes condoms and reproductive health aids

The “ONE” Mark

The ‘275 Patent

13. Karex’ ‘275 Patent is presumed valid.

The Infringing Product

defendants throughout the United States, including in this judicial district.

colorable imitation of Global’s ONE Mark.

likely to cause confusion, to cause mistake and/or to deceive purchasers of condoms.

packaging infringes the ‘275 Patent.

(Federal Trademark Infringement and Unfair Competition – 15 U.S.C. §1114)

paragraph of this Complaint.

or mistake and/or to deceive.

and strength of Global’s “ONE” Mark.

and continue to cause Global to suffer damage and irreparable injury.

(Common Law Trademark Infringement and Unfair Competition)

paragraph of this Complaint.

Global rights in the Mark, and unfair competition with Global.

distinctive quality and strength of Global’s Mark.

(False Designation of Origin – 15 U.S.C. §1125)

other paragraph of this Complaint.

confusion or mistake in violation of 15 U.S.C. §1125.

continues to suffer damage and irreparable injury.

paragraph of this Complaint.

(Infringement Under 35 U.S.C. §271 of the ‘275 Patent)

paragraph of this Complaint.

infringements of the ‘275 Patents.

PRAYERS FOR RELIEF

(i) Enter a preliminary, and thereafter permanent, injunction against defendants

Arthur and MSCI enjoining them from:

(a) using the designation or word “1”, or similar derivative names in

(b) otherwise infringing Global’s ONE Mark; and

(c) infringing the ‘275 Patent;

(ii) Enter a preliminary, and thereafter permanent, injunction ordering defendants

Arthur and MSCI to destroy or eliminate:

the advertising, sale, or offering for sale of the condoms; and

Plaintiffs demand a jury trial on all issues so triable.

GLOBAL PROTECTION CORP. and KAREX

/s/ Gary W. Smith

indicated as non-registered participants of the ECF system.

I.(a) PLAINTIFFS DEFENDANTS

Telephone Number) Attorneys (IfKnown)

Citizen or Subject ofa 0 3 O 3 Foreign Nation 11 6 06

V. ORIGIN (Place an "X" in One Box Only)

COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: 18( Yes CI No