In this action involving the restaurant known as Buddha Bar New York, plaintiffs George V Restauration S.A. (George V) and Creative Design for Restaurants and Bars, Ltd. (Creative Design) bring causes of action for state and federal trademark infringement, unfair competition, trademark dilution, trade dress infringement, breach of contract, and breach of the implied covenant of good faith and fair dealing against defendant Little Rest Twelve, Inc. (Little Rest Twelve).

Plaintiffs now seek a preliminary injunction restraining Little Rest Twelve from (1) using or registering any name, marks and/or trade dress that are confusingly similar to the trademark "Buddha-Bar," and (2) representing that it is associated in any way with plaintiffs. Plaintiffs also [*2]seek a preliminary injunction directing Little Rest Twelve to (1) make cosmetic changes to its restaurant so that it no longer resembles Creative Design's proprietary designs; (2) immediately transfer all trademarks and infringing articles; and (3) permit plaintiffs to conduct an audit as provided for under the agreements at issue in this case.

For the reasons set forth below, plaintiffs' motion is denied.

The underlying facts of this case are sharply disputed by the parties. In support of the motion for a preliminary injunction, plaintiffs submit the affidavit of Raymond Visan, plaintiffs' owner, who alleges that he is the creator of the Buddha-Bar concept and trade dress (Visan Aff., ¶ 1). Visan alleges that he first conceived of the Buddha-Bar concept in 1995, and that it was his intention to create a world-class restaurant based upon a distinct "Asian" theme (id., ¶ 3). The first Buddha-Bar opened in Paris in September 1996. According to Visan, with its opening in 1996, Buddha-Bar was the first of its kind to combine a restaurant and bar with the trance-like atmosphere of a club, which is created by, among other things, a specific layout and particular type of music played by a live DJ. Since 1996, Buddha-Bar has opened, or is planning for, approximately 25 locations (id., ¶ 4).

Except for Buddha-Bar Paris, all other Buddha-Bars are operated by third parties pursuant to trademark and concept licenses granted to the operators in return for consideration. According to Visan, such licenses comprise, among other things, the trademarks and trade dress of Buddha-Bar, including distinctive signs, food recipes, trade secrets, specific know-how, architectural designs, layout designs, uniforms, equipment specifications, inventory and marketing techniques (id., ¶ 5). George V is the registered owner of the trademarks Buddha-Bar and Buddha Bar in connection with various goods and services, including restaurant, bar and nightclub services (id., ¶ 6).

In March 2005, as part of Buddha-Bar's expansion into additional markets, Visan consented to the use of plaintiffs' trademarks, trade dress and concept by Little Rest Twelve, for its New York restaurant business (id., ¶ 25). Visan alleges that George V and Little Rest Twelve executed a Trademark License Agreement (the Trademark License), pursuant to which George V agreed to license plaintiffs' trademarks (the Marks) for Little Rest Twelve's use in its New York restaurant business (see Complaint, Exh 2). The terms of the Trademark License expressly provide that Little Rest Twelve would provide statements of turnover and pay royalties by the 15th day of each calendar month. In addition, Little Rest Twelve acknowledged that George V had full right in and to the Marks, and that Little Rest Twelve only had a right to use the Marks in accordance with the Trademark License. Little Rest Twelve expressly agreed that it would "conduct its business in a manner designed to protect the reputation and integrity of the Marks and the goodwill associated therewith" (id.).

According to Visan, the parties simultaneously entered into a Concept License Agreement (the Concept License), whereby Creative Design agree to license the Buddha-Bar concept and trade dress for Little Rest Twelve's use in its New York restaurant business (see Complaint, Exh 3). Under the Concept License, Creative Design agreed to license to Little Rest Twelve the "unique concept for the operation of [an] Asian-like restaurant" including, among other things, plaintiff's "distinctive signs, food recipes, trade secrets, specific know-how and other confidential information, architectural designs, trade dress, layout plans, uniform specifications, inventory and marketing techniques" (id.). Little Rest Twelve agreed that it would provide statements of turnover and pay royalties by the 7th day of each calendar month (id.).

Plaintiffs allege that, in January 2007, Little Rest Twelve wrongfully breached multiple [*3]provisions of the Trademark and Concept Licenses, causing those agreements to automatically be terminated. Plaintiffs assert that, among other things, Little Rest Twelve failed to provide statements of turnover and pay royalties, refused to permit plaintiffs to conduct an inspection and audit, failed to notify plaintiffs about changes in management and control of Little Rest Twelve, and wrongfully altered plaintiffs' protected trade dress.

Plaintiffs alleges that, as a result, Little Rest Twelve is wrongfully operating and marketing its New York restaurant with plaintiffs' "Buddha-Bar" name, trademarks, concept and trade dress, which unauthorized use will likely create significant customer confusion as to the source of the trademarks, trade dress and concept, as well as irreparably harm plaintiff's distinctive restaurant brand and concept. Plaintiffs assert that thus, they are entitled to a preliminary injunction enjoining Little Rest Twelve's conduct in infringing, diluting and competing with the Buddha Bar signature trademark and trade dress.

In opposition to the motion, Little Rest Twelve sharply contests plaintiffs' version of the facts. Little Rest Twelve submits the affidavit of David Kay, an authorized representative of JD Equities Corp., t/a ImedInvest Partners (ImedInvest), Little Rest Twelve's parent company. Little Rest Twelve's opposition largely rests on the facts contained in the Kay affidavit, as well as those contained in a related action brought by Little Rest Twelve against plaintiffs and parties in their control, pending in this court as Little Rest Twelve, Inc. v Rayon Visan, et al., Index No. 600676/06 (the First Action).^[FN1]

The complaint in the First Action seeks $20 million in compensatory damages for fraud and conversion, as well as punitive and exemplary damages, and the imposition of a constructive trust:

Essentially, Defendant Raymond Visan, and his spouse, Tarja Visan, have conspired by and amongst themselves and with other defendants in their control, and other individuals and entities ... to defraud the Plaintiffs and induce Plaintiffs to invest in their business ventures," known to defendants to be sham causing plaintiffs to lay out millions of dollars and unlawfully converting a significant portion of Plaintiffs' funds for their own exclusive use and benefit.

Complaint, First Action, ¶ 2 (Kay Aff., Exh 2).

According to the complaint in the First Action, Visan, a French national, and his entities have been subject to multiple criminal and bankruptcy proceedings in his native France, and Visan is barred from acting as an officer, director or principal of any company (id., ¶ 7).

In early 2002, Visan approached the principals of ImedInvest and solicited their investment in his ventures, including the "George V" and "Creative Design" entities (id., ¶ 26). Visan falsely depicted himself to be a prominent international businessman of impeccable reputation, while concealing that he and his ventures were subject to multiple criminal and bankruptcy proceedings (id., ¶¶ 27-28). ImedInvest trusted Visan and relied upon his deliberate misrepresentations, and continued to invest money into his enterprises (id., ¶ 33).

After ImedInvest had lost millions of dollars in Visan's enterprises, Visan pretended to "make good" by offering ImedInvest the opportunity to help found and operate a restaurant in New York [*4]using a "unique concept" of his Paris Buddha-Bar (id., ¶ 34). Visan represented that he would provide ImedInvest with the know-how, the concept and ongoing assistance to allow ImedInvest the opportunity to open a Buddha-Bar in New York (id.). Visan falsely represented that, while he charges others millions of dollars in advance for his "unique concept," he would supply ImedInvest his marketing method and design "free of charge" to make up for its losses into Visan's ventures (id., ¶ 35).

ImedInvest principals agreed, and in March 2004, it formed Little Rest Twelve and invested over $16 million dollars into making Buddha Bar New York a premier landmark restaurant (Kay Aff., ¶ 14). Visan inserted Jean-Yves Haouzi, his long-time associate, as an officer of Little Rest Twelve, by claiming that he was an "expert" on operating restaurants in New York City while, in reality, he had no experience operating restaurants in New York, and offered no assistance to Little Rest Twelve in the start-up or operation of the restaurant (Complaint, First Action, ¶¶ 36-37). In addition, while on Little Rest Twelve's payroll, he continued to secretly work for Visan in promoting his enterprises in France (id., ¶ 38).

Little Rest Twelve alleges that, without its knowledge or that of ImedInvest, Visan purported to execute the Trademark and Concept Licenses between George V and Little Rest Twelve on terms to which ImedInvest or Little Rest Twelve never agreed. According to Little Rest Twelve, Haouzi, using his fraudulently secured officership with Little Rest Twelve, signed the agreements on behalf of Little Rest Twelve (id., ¶ 39). Kay alleges that the agreements are "backdated fakes" and "crude forgeries," and that "no trademark/concept agreements'" were ever entered into between the parties (Kay Aff., ¶ 11).

Kay further alleges that all of Visan's representations and promises turned out to be bogus. His "unique concept" turned out to be no more unique than that which goes into operating any large restaurant, and his "marketing techniques" did not work in the New York restaurant scene (id., ¶ 5). Moreover, there is no "brand" called Buddha-Bar (id., ¶ 15). While Visan claims that he first conceived of the Buddha-Bar concept in 1995, in reality, a well-known restaurant named "Buddha Bar" was opened in 1993 by the Lesort brothers (id., ¶ 13). According to Kay, with the recent worldwide fashion trend of Zen-Tao-Asian-Yoga lifestyle and philosophy, hundreds, if not thousands, of entertainment and other establishments all over the world use the name "Buddha," and many are called "Buddha Bar" (id.).

Little Rest Twelve asserts that, when it realized that Visan's "help," for which it paid enormous consulting fees, was not only useless but was undermining the Buddha Bar New York image, it sought to disassociate itself from everything that connected it to Visan and his Buddha-Bar Paris.

Plaintiffs' motion for a preliminary injunction is premised upon their claim that Little Rest Twelve breached the Trademark and Concept Licenses, and that Little Rest Twelve is infringing upon plaintiffs' Buddha-Bar trademarks.

Preliminary injunctive relief is a drastic remedy, which is not routinely granted (Peterson v Corbin, 275 AD2d 35 [2d Dept], lv dismissed 95 NY2d 919 [2000]).

Entitlement to a preliminary injunction requires a showing of (1) the likelihood of success on the merits, (2) irreparable injury absent the granting of preliminary injunctive relief, and (3) a balancing of the equities (CPLR 6301; Nobu Next Door, LLC v Fine Arts Hous., Inc.. 4 NY3d 839 [2005]; Aetna Ins. Co. v Capasso, 75 NY2d 860 [1990]). If any one of these three requirements is not [*5]satisfied, the application must be denied (Faberge Intl. v De Pino, 109 AD2d 235 [1st Dept 1985]).

Plaintiffs have failed to establish any of these elements. First, with respect to a likelihood of success on the merits, all of the essential facts underlying plaintiffs' claims that Little Rest Twelve breached the Trademark and Concept Licenses, and that it is infringing upon the Buddha-Bar concept, are sharply disputed by Little Rest Twelve.

"While issues of fact alone will not justify denial of a motion for a preliminary injunction" the issues raised by Little Rest Twelve "subvert the plaintiff[s'] likelihood of success on the merits in this case to such a degree that it cannot be said that the plaintiff[s] established a clear right to relief" (Milbrandt & Co. v Griffin, 1 AD3d 327, 328 [2d Dept 2003]; see also County of Westchester v United Water New Rochelle, 32 AD3d 979, 980 [2d Dept 2006] ["When central facts are in dispute, it is more difficult to ascertain whether the movant has shown a likelihood of success on the merits"]; Eklund v Pinkey, 31 AD3d 908, 909 [3d Dept 2006] [internal citation omitted] ["While mere issues of fact will not preclude a preliminary injunction, sharp factual issues obscuring the likelihood of success will bar the remedy"]).

Although plaintiffs contend that Little Rest Twelve has breached the Trademark and Concept Licenses, giving rise to a finding of infringement, Little Rest alleges that these agreements were "backdated fakes" and forgeries (Kay Aff., ¶ 11). Indeed, a review of the agreements attached to plaintiffs' complaint as Exhibits 2 and 3 reveals that the Trademark License purports to be signed by the Licensor (George V) on 4/13/05, and subsequently by the Licensee (Little Rest Twelve) on a prior date "4/4/05" (see Complaint, Exh 2). Likewise, the Concept License purports to be signed by Little Rest Twelve on "04/04/05", which is clearly superimposed over a "05/05/05" date (see id., Exh 3). Little Rest Twelve asserts that the reason for these inconsistencies is that no " trademark/concept agreements'" were ever entered into between the parties and the exhibits attached to the plaintiffs' moving papers are crude forgeries" (Kay Aff., ¶ 11). There are thus triable issues of fact as to whether the agreements underlying the heart of this motion are even genuine, and thus, plaintiffs cannot establish a likelihood of success on their breach of contract claim.

Plaintiffs also contend that they are entitled to an injunction because defendant's use of the Buddha-Bar trade name infringes upon their trademark, in that it is likely to cause confusion, mistake or deception (see Allied Maintenance Corp. v Allied Mechanical Trades, 42 NY2d 538, 543 [1977] [under New York state and federal law, in order to prevail on their infringement claims, plaintiffs must demonstrate that defendant's use of the trademark "is likely to cause confusion, mistake or to deceive"]; Frank's Rest., Inc. v Lauramar Enter., Inc., 273 AD2d 349 [2d Dept 2000] [same]). However, Little Rest Twelve raises issues of fact by its allegation that, not only does it not seek to "confuse" its patrons into believing that it is affiliated with Visan's Buddha-Bar, it strives to distance itself from Visan's Paris Buddha-Bar because of Visan's tarnished image. Indeed, Little Rest Twelve's website prominently displays a disclaimer that "Buddha Bar NYC is not affiliated with any other restaurant, dining or entertainment establishment or any entity named Buddha,' Buddha Bar' or similarly sounding name" (Aff. of Nina Zajic, ¶ 20; Exh 1).

Accordingly, given the sharply disputed issues of fact, plaintiffs are not entitled to a preliminary injunction (see Pearlgreen Corp. v Yau Chi Chu, 8 AD3d 460 [2d Dept 2004]; Gagnon Bus Co., Inc. v Vallo Transportation, Ltd., 13 AD3d 334 [2d Dept 2004]).

Plaintiffs also cannot demonstrate that they will suffer irreparable harm absent the issuance of an injunction. It is well-established that no injunction will issue unless the moving party shows [*6]it will suffer irreparable injury, loss or damage without such relief (see Credit Agricole Indosuez v Rossiyskiy Kredit Bank, 94 NY2d 541 [2000]). To be "irreparable," the injury alleged must be incapable of being adequately compensated in money damages (see OraSure Tech., Inc. v Prestige Brands Holdings, Inc., 42 AD3d 348 [1st Dept 2007]; Rosenthal v Rochester Button Co., 148 AD2d 375 [1st Dept 1989]).

Here, plaintiffs themselves have already ascribed a value of $15 million to their damages, the amount which plaintiffs offered to Little Rest Twelve to buy Buddha Bar New York "instead of going to Court and seeking to enjoin defendant's continued use of the Buddha-Bar trademarks and concept" (Visan Aff., ¶ 49). Visan also alleges that the Buddha-Bar name "is worth over $300 million" (id., ¶ 66). Hence, money damages are readily ascertainable.

The balance of the equities also weighs heavily against granting injunctive relief. Courts consider a variety of factors when balancing the equities, including whether the irreparable injury to plaintiffs is more burdensome than the harm to defendant through the imposition of the injunction (see Metropolitan Steel Corp. Industries, Inc. v Perini Corp., ___ AD3d ___, 2008 WL 896222 [1st Dept 2008]). This factor clearly weighs against the issuance of an injunction here. Little Rest Twelve has invested over $16 million in Buddha Bar New York, a large portion of which is allocated to a highly successful advertising and public relations campaign promoting the name and signs of Buddha Bar New York (see Kay Aff., ¶ 28). Kay alleges that enjoining Little Rest Twelve from using the name and signs they have built "is tantamount to shutting down the establishment causing the defendant to lose its entire investment" (id.).

I have considered the remaining claims, and I find them to be without merit.

Accordingly, plaintiff's motion for an injunction is denied.

Dated: ___________

ENTER:

_______________________

J.S.C.