complaint bayer cipla

8/4/2019 Complaint Bayer Cipla

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David H. Bernstein ([email protected])Michael Schaper ([email protected])Christopher J. Hamilton ([email protected])Benjamin Sirota ([email protected])DEBEVOISE & PLIMPTON LLP919 Third Avenue New York, New York 10022(212) 909-6696 (telephone)(212) 521-7696 (facsimile)

Attorneys for Plaintiff Bayer HealthCare LLC

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK x

BAYER HEALTHCARE LLC,

Plaintiff,

v.

CIPLA LTD., VERITAS PHARMA PTE. LTD. d/b/a OTCPET MEDS, RONIN VENTURES PTE. LTD. d/b/aTRUSTED PET MEDS, OKPET.COM, ARCHIPELAGOSUPPLIERS PTY LTD d/b/a FREEDOM-PHARMACY.COM and USAPHARMACYPILLS.COM,HEALTHY CHOICE PHARMACY.COM INC. d/b/a THEPHARMACY EXPRESS, and ABC COMPANIES 1-100,

Defendants.

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::::::

11 CIV. 6347 (PKC)

ECF CASE

x

COMPLAINT AND DEMAND FOR JURY TRIAL

Plaintiff Bayer HealthCare LLC (Bayer), by its attorneys, Debevoise &

Plimpton LLP, for its complaint against (1) Cipla Ltd. (Cipla) and (2) Veritas Pharma

Pte. Ltd., d/b/a OTC Pet Meds, Ronin Ventures Pte. Ltd. d/b/a Trusted Pet Meds,

Case 1:11-cv-06347-PKC Document 1 Filed 09/12/11 Page 1 of 44


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OKPet.com, Archipelago Suppliers Pty Ltd d/b/a Freedom-Pharmacy.com and

USAPharmacyPills.com, Healthy Choice Pharmacy.com Inc. d/b/a The Pharmacy

Express, and the ABC Company defendants (the Website Defendants) (together with

Cipla, the Defendants), alleges as follows:

INTRODUCTION

1. Cipla, the Indian pharmaceutical giant, and its website partners are engaged

in an unlawful campaign to deceive U.S. consumers into believing that Ciplas pet

medicines are made by Bayer. Ciplas latest copycat pet medicine DA DOUBLE

ADVANTAGE is a blatant rip off of Bayers ADVANTAGE trademark, which Bayer

has used continuously since 1996 in connection with its line of products for the control of

fleas and other pests on pets. In an unsuccessful effort to avoid being subjected to U.S.

jurisdiction, Cipla does not itself sell DA DOUBLE ADVANTAGE to U.S. customers;

rather, it relies on its website partners to complete the sales. Ciplas website partners

have exacerbated these violations by falsely advertising DA DOUBLE ADVANTAGE as

equivalent to or the generic version of Bayer pet medicines sold in the United States;

in fact, Ciplas medicines are not only materially different from the medicines Bayer sells

in the United States, but they also have not been approved by the Environmental

Protection Agency (EPA) and are thus prohibited from sale in the United States. In

some cases the website partners have also unlawfully shipped gray market products into

the United States.



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2. Accordingly, Bayer has filed this action for trademark counterfeiting and

infringement, false advertising, deceptive acts and practices, trademark dilution and

unfair competition to put an end to Ciplas and its website partners campaign of

deception.

3. Bayers ADVANTAGE trademark is among the most well-known marks in

the category of pet medicines for dogs and cats. Through fifteen years and many millions

of dollars of sales, Bayer has built up significant goodwill in the ADVANTAGE mark.

Currently, Bayer manufactures and sells two ADVANTAGE products in the United

States: ADVANTAGE MULTI, a heartworm and flea preventative for dogs and cats,

and ADVANTAGE II, a flea and other parasite preventative for dogs and cats. Bayer

also markets K9 ADVANTIX II, a flea and tick preventative specifically designed for

dogs, which cannot be used on cats because one of its ingredients cannot be metabolized

by, and can be toxic to, cats.

4. In a bad faith attempt to deceive consumers and trade off the fame of

Bayers ADVANTAGE mark, Cipla has introduced a knock-off flea and tick preventative

named DA DOUBLE ADVANTAGE. DA DOUBLE ADVANTAGE counterfeits

Bayers ADVANTAGE trademark and will deceive consumers by leading them to

believe the product comes from, or is made with the permission or approval of, Bayer.

5. Even worse, the name Cipla has selected for this product risks confusing

consumers into believing that the product can be used on cats (like Bayers



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2011 U.S. Dist. LEXIS 65639, at *14 (M.D. Ga. June 21, 2011). In that case, just like

here, Cipla played the critical and essential roles of manufacturing, packaging, and

assisting in the development of the [infringing flea and tick preventative] product . . . to

sell in the U.S. Cipla knew the product was to be sold in the U.S., even though the

product traveled from its facilities in final consumer-ready condition through various

other layers before it actually ended up on U.S. soil. Id. at 21.

7. In addition to their facilitation of Ciplas counterfeiting and infringement,

the Website Defendants have directly engaged in trademark infringement and

counterfeiting by advertising DA DOUBLE ADVANTAGE on their websites and

targeting those ads to U.S. consumers, taking orders for DA DOUBLE ADVANTAGE,

and/or selling the infringing product to consumers in the United States, including in this

District. The Website Defendants also are engaged in false advertising because they

describe DA DOUBLE ADVANTAGE on their websites as the equivalent or the

generic version of Bayers K9 Advantix. These representations are false because DA

DOUBLE ADVANTAGE is materially different from Bayers current U.S. product, K9

ADVANTIX II, in a number of respects, including its formulation, its active ingredients

and its labeling. (It also is materially different from Bayers now-discontinued product,

K9 ADVANTIX.) Ciplas DA DOUBLE ADVANTAGE is also not compliant with

requirements of the EPA (which regulates pesticides used on pets). As such, it is

unlawful for that product to be sold in the United States and it cannot be passed off as an

equivalent or generic version of Bayers U.S.-approved product.



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8. Two of the Website Defendants are engaged in a related deceptive scheme

they advertise (falsely) that DA DOUBLE ADVANTAGE is the generic version of K9

ADVANTIX and then, in response to orders from the United States, fill those orders with

a product called ADVANTIX, which is made by foreign affiliates of Bayer for sale in

other countries and which is materially different from the products Bayer sells in the

United States. Two other of the Website Defendants actually offer and sell the foreign

ADVANTIX in addition to Ciplas DA DOUBLE ADVANTAGE. Whether they ship

DA DOUBLE ADVANTAGE or the foreign ADVANTIX, the conduct of these

defendants is just as culpable: The sale of these materially different gray market goods is

prohibited under the Lanham Act (as well as by EPA regulations).

9. Actual confusion as to the source of DA DOUBLE ADVANTAGE has

already occurred. In fact, it was a complaint from a customer who believed DA

DOUBLE ADVANTAGE was a Bayer product and contacted Bayer after her dog

began vomiting from it that first alerted Bayer to the infringing product. That incident

led to Bayers investigation, through which Bayer learned of the involvement of all the

Defendants in the manufacturing, marketing or sale of Ciplas infringing DA DOUBLE

ADVANTAGE in the United States.

10. Defendants actions are causing grievous harm to Bayer and should

immediately be enjoined. The sale of DA DOUBLE ADVANTAGE is sure to confuse

consumers as to whether the product comes from or is sold with the authorization of

Bayer. Even worse, because Bayers ADVANTAGE products all can be used on cats,



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consumers receiving Ciplas DA DOUBLE ADVANTAGE may be deceived into

believing that that product, as well, can be used on cats. The result could be catastrophic

not only to Bayers goodwill but also to pets.

THE PARTIES

11. Bayer HealthCare LLC (Bayer) is a limited liability company organized

and existing under the laws of the State of Delaware with its principal place of business

in this District at 511 Benedict Avenue, Tarrytown, New York 10591. Bayer owns rights

in the United States to a number of pet medicine brands, including ADVANTAGE

MULTI, ADVANTAGE II and K9 ADVANTIX II. Bayer is a wholly-owned subsidiary

of Bayer Corporation, which is a wholly-owned subsidiary of Bayer Aktiengesellschaft

(Bayer AG), an entity formed under the laws of Germany.

12. Upon information and belief, Defendant Cipla Ltd.(Cipla) is a

pharmaceutical company organized and existing under the laws of India, with a business

address of Mumbai Central, Mumbai 400 008 India. Cipla markets its products in over

180 countries around the world, including in the United States, and has annual sales of

over $1 billion. Cipla does business in this District, including by selling DA DOUBLE

ADVANTAGE to U.S. consumers in this District through the Defendant Websites.

Cipla, through partnerships with U.S. pharmaceutical companies, also sells other products

directly in the United States.

13. Upon information and belief, Defendant Veritas Pharma Pte Ltd d/b/a OTC

Pet Meds (OTC Pet Meds) is a business entity organized and existing under the laws of



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Singapore, with business addresses at 10685-B Hazelhurst Drive #1132, Houston, Texas

77043, 8 Jalan Batu, #01-05, Singapore 431008, and P.O. 613, Singapore. OTC Pet

Meds is engaged in the distribution, advertising and sale of pet medicines, including

through the website otcvetmeds.com. OTC Pet Meds does business in the United States,

including in this District, by selling pet medicines directly to U.S. consumers through the

Internet.

14. Upon information and belief, Defendant Ronin Ventures Pte. Ltd. d/b/a

Trusted Pet Meds (Trusted Pet Meds) is a business entity based in Mauritius. Trusted

Pet Meds is engaged in the distribution, advertising and sale of pet medicines, including

through the website trustedpetmeds.com. The registrant of the trustedpetmeds.com

domain name is Ronin Ventures Pte. Ltd./Ken Adams 1 st Floor, Felix House, 24 Fr.

Joseph Riviere St., Port Louis, Mauritius. Bayer has not been able to determine that this

is a reliable address. Trusted Pet Meds does business in the United States, including in

this District, by selling pet medicines directly to U.S. consumers through the Internet.

15. Upon information and belief, Defendant OKPet.com is a business entity

based in Canada. OKPet.com has a call center located in Whiterock, British Columbia,

Canada. OKPet.com is engaged in the distribution, advertising and sale of pet medicines,

including through the website OKPet.com. OKPet.com does business in the United

States, including in this District, by selling pet medicines directly to U.S. consumers

through the Internet.



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16. Upon information and belief, Defendant Archipelago Suppliers Pty Ltd

(Archipelago Suppliers) is a business entity based in Vanuatu. Archipelago Suppliers

business is repackaging medicines, including pet medicines, for mail order customers.

Archipelago Suppliers operates websites including Freedom-Pharmacy.com and

USAPharmacyPills.com. Both of these websites list Archipelago Suppliers address as

PO Box 265, Port Vila, Vanuatu. Archipelago Suppliers does business in the United

States, including in this District, by selling pet medicines directly to U.S. consumers

through these websites.

17. Upon information and belief, Defendant Healthy Choice Pharmacy.com Inc.

d/b/a The Pharmacy Express (The Pharmacy Express) is a business entity which may

be based in Cyprus, California or Vanuatu. The Pharmacy Express does business in the

United States, including in this District, by selling pet medicines directly to U.S.

consumers through the Internet, including at the website thepharmacyexpress.com. The

registrant of the ThePharmacyExpress.com domain name is listed as Healthy Choice

Pharmacy.com Inc., PO Box 61359, Sunnyvale, CA 94088. One business directory lists

as a company representative Andrea Zakou of Arrowtargets Enterprises Ltd. 4, Ekgomi,

P.C.2404 Nicosia Cyprus. However, consumers ordering DA DOUBLE ADVANTAGE

from ThePharmacyExpress.com are directed to send payment to Joana George at P.O.

Box 265, Port Vila, Vanuatu a post office box also used by Archipelago Suppliers.

This suggests a connection between these two Defendants, but leaves mysterious The

Pharmacy Expresss actual business address.



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18. Upon information and belief, Cipla is using other websites and entities to

facilitate its unlawful conduct in the United States. Despite its diligent investigation,

Bayer has not yet uncovered the identity of these additional companies as of the date of

this Complaint. Accordingly, they are identified for now as ABC Companies 1-100.

Bayer reserves the right to seek to amend this Complaint in the future to name these

additional defendants.

JURISDICTION AND VENUE

19. This is an action arising under the Trademark Act of 1946, 15 U.S.C. 1051,

et seq. (the Lanham Act), and under the laws of the State of New York.

20. This Court has original jurisdiction over the subject matter of this action

pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331, 1332, and 1338(a) and (b). This

Court has supplemental jurisdiction over all other claims asserted herein under 28 U.S.C.

1367(a). The amount in controversy exceeds $75,000, exclusive of interest and costs.

21. This Court has personal jurisdiction over Cipla pursuant to N.Y. Civ. Prac.

L. & R. 301 & 302. Upon information and belief, Cipla, both in person and through

its co-defendant agents, has regularly transacted and done business in the State of New

York and in this District, derives substantial revenue from goods consumed in New York

and in this District, has wrongfully caused injury to Bayer in the State of New York and

in this District (such injury being reasonably foreseeable), and derives substantial revenue

from international commerce. Alternatively, this Court has personal jurisdiction over



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Cipla for Lanham Act violations pursuant to Federal Rule of Civil Procedure 4(k)(2)

because Cipla is not subject to jurisdiction in any state court and has transacted

substantial business across the United States.

22. This Court has personal jurisdiction over each of the Website Defendants

pursuant to N.Y. Civ. Prac. L. & R. 301 & 302. Upon information and belief, each of

the Website Defendants transacts and does business in the State of New York and in this

District, has contracted to supply goods to consumers in the State of New York and in

this District, has wrongfully caused injury to Bayer in the State of New York and in this

District (such injury being reasonably foreseeable), and derives substantial revenue from

international commerce.

23. Upon information and belief, venue is proper in this district pursuant to 28

U.S.C. 1391(b) and (c) because Defendants are subject to personal jurisdiction in this

district and therefore are deemed to reside in this District.

BAYERS TRADEMARKS AND ANIMAL HEALTH PRODUCTS

24. Bayer is engaged in the distribution and sale in interstate commerce of high

quality animal health products specifically formulated for use in the United States. Bayer

has sold pet medicines in the United States since 1921. It is among the top five

manufacturers of pest control products for pets in the United States.



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25. All of Bayers products are sold under the famous BAYER trademark.

Bayer AG, Bayers ultimate parent, has granted Bayer an exclusive license to use the

BAYER mark in connection with animal health products in the United States.

26. Bayer is the owner of the ADVANTAGE trademark, which is registered in

the U.S. Patent and Trademark Office (USPTO) and is incontestable pursuant to 15

U.S.C. 1065. See Exhibit A (U.S. Trademark No. 2,044,733 for ADVANTAGE for

flea control preparation for dogs and cats). Bayer has continuously and exclusively

used its ADVANTAGE mark in connection with its animal healthcare products since

1996. Bayers advertising, promotional and marketing efforts have resulted in

widespread and favorable public acceptance and recognition for the ADVANTAGE

trademark in the United States. As a result of Bayers efforts, and the millions of dollars

of sales in animal healthcare products bearing this trademark, the ADVANTAGE

trademark has become singularly associated in the minds of consumers with the Bayer

brand.

27. Currently, Bayer manufactures, distributes and sells the two product lines

under the ADVANTAGE trademark in the United States: ADVANTAGE MULTI, a

prescription product for dogs and cats that combines heartworm and other parasite

prevention with flea control; and ADVANTAGE II, a non-prescription flea preventative

that can be used on dogs and cats (which updates Bayers previous version of the product,

ADVANTAGE, by adding pyriproxyfen, an insect growth regulator (IGR) that



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prevents flea larvae from developing into adult fleas as a further means of breaking the

flea life cycle).

28. Bayer also manufactures, distributes and sells a product that kills ticks as

well as fleas. Because the active ingredient that kills ticks (permethrin) can be toxic to

cats, Bayers flea and tick product can only be used on dogs. To reinforce that this

product is meant only for use on dogs (canines), it is called K9 ADVANTIX II; in

addition, the packaging for K9 ADVANTIX II contains a prominent, graphic warning

that the product is not for use on cats (with that warning repeated on both the front and

back of the box and in the product insert).

REGULATION OF FLEA AND TICK CONTROL PRODUCTS

29. Some pet medicines are subject to Food and Drug Administration (the

FDA) regulations, and thus are available only by prescription. These prescription

products can be purchased by pet owners only from veterinarians and pharmacies.

Examples of such prescription pet medicines include Bayers ADVANTAGE MULTI

product.

30. Other pet medicines, including topical pesticides not regulated by the FDA,

can legally be sold through pet stores and general retail outlets. Examples of such non-

prescription pet medicines include Bayers ADVANTAGE II and K9 ADVANTIX II

products. Because these products contain pesticides, they must be registered with the

EPA, which regulates pesticides used on pets. 7 U.S.C. 136 et seq . ADVANTAGE II



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and K9 ADVANTIX II must also be registered with state agencies for their use,

distribution, sale or offer of sale within each state; in New York, ADVANTAGE II and

K9 ADVANTIX II are registered with the New York State Department of Environmental

Conservation (NYSDEC). ECL 33-0701. Both federal and state agencies require the

submission of the proposed product label as part of the registration procedure. 7 U.S.C.

136a(c)(1)(C); ECL 33-0703.

31. The packaging and accompanying inserts for ADVANTAGE II and K9

ADVANTIX II are allowed by the EPA as part of the registration process, and provide

U.S. consumers with detailed information on the products as required or recommended

by the EPA. The information on the packages and/or inserts for ADVANTAGE II and

K9 ADVANTIX II includes: (1) the weight of the animals for which the dose is

appropriate, in pounds; (2) the percentage of each active ingredient in the product; (3)

detailed information on the efficacy of the product; (4) contact information for the

manufacturer, in case a consumer has a question or complaint; (5) an emergency

telephone number; (6) detailed information on when and how to give the solution to pets;

(7) disposal information for used and partially used product; and (8) the EPAs

registration number for the product and the establishment number (EST #) which

identifies the site of manufacture.

32. Just as Bayer makes certain pet medicine products that are intended and

approved for use only in the United States, foreign affiliates of Bayer make materially

different versions of the products that are intended and approved for use only outside of



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the U.S. For example, foreign Bayer affiliates sell a product called ADVANTIX, which

is similar to the K9 ADVANTIX product that Bayer used to sell in the United States (but

has now replaced with K9 ADVANTIX II). These foreign products contain packaging,

labels and instructions specific to their non-U.S. markets, and for those reasons are not

approved by the EPA for sale in the United States. The products that Bayer currently

sells in the United States ADVANTAGE II and K9 ADVANTIX II are only sold in

the United States and have no equivalent in the foreign market. These products include

an active ingredient (the IGR pyriproxyfen) that is not used in Bayer products sold in

other countries.

33. Bayer does not use its K9 ADVANTIX mark outside of the United States;

the ADVANTIX product, on the other hand, is only sold by foreign Bayer affiliates

outside of the United States.

THE DEFENDANTS VIOLATIONS OF BAYERS MARKS

34. Cipla recently began manufacturing a knockoff flea and tick preventative

product and selling it into the United States under the infringing name DA DOUBLE

ADVANTAGE. Bayer first learned of this product when, in June 2011, Bayers

veterinary hotline received a call from a customer reporting that her dog had started

vomiting violently after contact with K9 Advantix. After the customer shipped the product that made her dog sick to Bayer, Bayer learned that the product was not a Bayer

product at all, but rather a new product called DA DOUBLE ADVANTAGE. Upon

information and belief, the customer had contacted Bayer (rather than Cipla) because she



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believed the product she used was a Bayer product. The customer stated that she

received the DA DOUBLE ADVANTAGE from Defendant OKPet.com (which did not

advertise the product on its website under the DA DOUBLE ADVANTAGE name;

instead, it referred to the product only as generic K9 Advantix).

35. Based on its review of the DA DOUBLE ADVANTAGE packaging that

Bayer received from this complaining consumer, Bayer determined that the product was

manufactured by Cipla. However, Ciplas website did not list DA DOUBLE

ADVANTAGE as one of its products. Accordingly, Bayer engaged private investigators

to investigate Ciplas use of the DA DOUBLE ADVANTAGE trademark.

36. Despite its diligent efforts, Bayers investigation to date has not revealed

detailed information about Ciplas manufacture of or distribution plans for DA DOUBLE

ADVANTAGE. Ciplas website, www.cipla.com, still has no explicit reference to DA

DOUBLE ADVANTAGE. Instead, www.cipla.com lists the product in a chart of its

Animal Health Care products by describing its active ingredients, with the brand name

left suspiciously blank. See Exhibit B.

37. What Bayers investigation did reveal is that, characteristic of Ciplas past

history, Cipla utilizes several third-party websites to market, offer and/or sell the

infringing DA DOUBLE ADVANTAGE product into the United States. The Website

Defendants all claim to offer U.S. consumers the ability to directly purchase DA



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DOUBLE ADVANTAGE and all identify the product as a generic version of, or

equivalent to, K9 Advantix:

a. Defendant OTC Pet Meds offers from its website DA DOUBLE

ADVANTAGE, describing the product alternately as Generic K9 Advantix

(Bayer) and K9 Advantix/DA Double Advantage for Dogs. The website a lso

states that the product is Mfg [Manufactured] by-Cipla (Vet Care). OTC Pet

Meds targets the U.S. market by, among other features, giving prices in U.S.

dollars (the only other option being Japanese Yen); using the U.S.-specific

trademark K9 ADVANTIX to describe its offerings; and listing a U.S. telephone

number, address and email address as contact information. On August 23, 2011,

OTC Pet Meds published a press release announcing the launch of DA

DOUBLE ADVANTAGE as a generic version of K9 ADVANTIX. See Exhibit

C. The press release boasts that DA DOUBLE ADVANTAGE is the best

treatment to protect your dog from the harmful parasitic attack and that it

contains exactly the same ingredients as used in K9 Advantix for the prevention

and treatment of ticks, fleas, mosquitoes, biting flies and lice on dogs and it costs

almost half the rate of its original counterpart. The press release, which was

issued from Houston, Texas, targets the U.S. market by discussing the costs in

U.S. dollars of taking care of a dog or cat in the U.S. and concerns of [p]et

owners in America more generally; and by giving as contact information OTC

Pet Medss Houston address.



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b. Defendant Trusted Pet Meds offers from its website DA DOUBLE

ADVANTAGE, describing the product as the generic equivalent of K9

Advantix, containing exactly the same ingredients namely

Imidacloprid/Permethrin. The website also states that the product is

Manufactured by Cipla Pharmaceuticals Ltd. Trusted Pet Meds targets the U.S.

market by, among other features, giving prices in U.S. dollars (and in no other

currency); using the U.S.-specific trademark K9ADVANTIX to describe its

offerings; and posting an article titled Statistics of dog ownership in United

States.

c. Defendant OKPet.com, the company from whom the complaining

customer purchased DA DOUBLE ADVANTAGE, does not identify DA

DOUBLE ADVANTAGE by that name on its website and does not state who

manufactures it. Instead, the website simply offers for sale a generic version of

K9 Advantix. However, as noted above, in response to orders for generic

K9 Advantix, OKPet.com ships DA DOUBLE ADVANTAGE to U.S.

consumers. OKPet.com targets the U.S. market by, among other features, giving

prices in U.S. dollars; stating that we only ship within the United States; calling

itself Americas most trusted online pet store; listing a U.S. toll free number to

contact; and using the U.S.-specific K9 ADVANTIX trademark to describe its

offerings.



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a. Different Measurements and Dosages. The proper dosage for pet

medicines is, in part, dependent on the weight of the animal. On all packages sold

in the United States, Bayer lists the appropriate weight ranges in pounds so that

U.S. consumers can select the proper product for their pets. DA DOUBLE

ADVANTAGE, in contrast, uses kilograms to designate the size of the dog for

which the dose is appropriate, which may be confusing to those Americans not

familiar with converting weights from the metric system. Moreover, the weight

ranges for Bayers products and DA DOUBLE ADVANTAGE do not directly

correspond to each other. For example, a 0.4 ml dose of K9 ADVANTIX II is

sold for dogs weighing under 10 pounds, whereas a 2.5 times larger dose of DA

DOUBLE ADVANTAGE (1 ml) is sold for dogs weighing 4 to 10 kg. This

means that a dog weighing about 9 pounds (about 4 kilograms) would be

indicated for a much larger dose of DA DOUBLE ADVANTAGE than for K9

ADVANTIX II.

b. Different Claimed Efficacy. As shown below, the EPA-approved

packaging for K9 ADVANTIX II states that it prevents and treats ticks, fleas,

mosquitoes, biting flies and lice. The packaging for DA DOUBLE

ADVANTAGE (which has not been reviewed or approved by the EPA) states that

it is For the prevention and treatment of tick and flea infestations and the

repulsion of mosquitoes, sandflies and the stable fly. The claim that the product

is effective against sandflies and stable flies is not a claim approved by the



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EPA for use in the United States. Similarly, DA DOUBLE ADVANTAGE does

not indicate whether, like K9 ADVANTIX II, it is effective against lice.

c. Different Warning Labels. As noted above, neither K9

ADVANTIX II nor DA DOUBLE ADVANTAGE is intended for use on cats

because one of the active ingredients, permethrin, can be toxic to them. For that

reason, as shown above, Bayers K9 ADVANTIX II includes the clear and

prominent warning DO NOT USE ON CATS on the front of the product

packaging; the warning is repeated on the back of the packaging and on the

product insert. DA DOUBLE ADVANTAGE does not include any such warning

on the front of the packaging; its only warning is on the back of the product insert,

where it more easily could be overlooked by consumers.

d. Regulatory Approval. Bayer underwent a thorough vetting processwith the EPA that resulted in approval and registration of K9 ADVANTIX II for

sale in the United States. Cipla has no such registration from the EPA for DA

DOUBLE ADVANTAGE; it is therefore an unregulated, illegal product in the



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United States. Upon information and belief, Cipla has not attempted to submit to

the EPA (nor could it) proof of generic equivalency and effectiveness.

39. To confirm that each of the Website Defendants is selling its products to

U.S. consumers, including in this District, Bayers investigators placed orders on each of

the websites and requested delivery to New York City. In response to the investigators

orders, defendants OTC Pet Meds, Trusted Pet Meds, and OKPet.com each shipped

Ciplas DA DOUBLE ADVANTAGE to Bayers investigators in New York City. These

defendants seem to be linked because, in all three cases, the product arrived in a box

postmarked from Germany with a sticker stating that the product was dispensed by Anam

Pharmacy in Singapore. It likely is not a coincidence that Anam Pharmacy shares a

business address with Defendant OTC Pet Meds.

40. With respect to Defendants Archipelago Suppliers and The Pharmacy

Express, although the investigators ordered DA DOUBLE ADVANTAGE, these

Defendants shipped a different product ADVANTIX to the investigators in New York

City. Bayer has reviewed these packages received from Defendants Archipelago

Suppliers and The Pharmacy Express and has confirmed that these are gray market

products, made by a Bayer affiliate strictly for sale outside the United States (the

ADVANTIX packaging states that it was manufactured in Germany by a Bayer AG

company for ultimate distribution by Bayer Thai Co., Ltd.) Curiously, these Defendants

ADVANTIX products also arrived in boxes postmarked from Germany. The shipping

boxes appear to be identical to the shipping boxes used by the other Website Defendants,



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suggesting that all of the Website Defendants may be linked in some way or may be

fulfilling orders through the same company.

41. Having received ADVANTIX product from these two Defendants, Bayer

expanded its investigation to determine whether the other Website Defendants also are

selling gray market ADVANTIX products in the United States. OTC Pet Meds and

Trusted Pet Meds also are advertising ADVANTIX for sale to U.S. consumers. Bayers

investigators have placed orders for this product to see what is actually delivered; those

products have not yet arrived as of the date of this Complaint.

42. Unlike K9 ADVANTIX II (as well as Bayers previous product K9

ADVANTIX), ADVANTIX is not registered by the EPA for sale in the United States and

is intended only for the non-U.S. market. That product specifies dog weights in the

metric system for purposes of determining the proper dose, says that it is effective against

sand flies and stable flies (types of pests Bayers products in the United States do not

seek to prevent), does not include an emergency telephone number that works in the

United States, and does not contain an EPA registration number. ADVANTIX is also

materially different from Bayers K9 ADVANTIX II sold in the United States in that it

lacks the IGR active ingredient pyriproxyfen.

43. By manufacturing DA DOUBLE ADVANTAGE for sale in the United

States, advertising DA DOUBLE ADVANTAGE to U.S. consumers, and/or selling DA

DOUBLE ADVANTAGE into the United States, Cipla and the Website Defendants have



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counterfeited and violated Bayers ADVANTAGE trademark. Defendants use of the

DA DOUBLE ADVANTAGE name will inevitably confuse consumers. Consumers are

likely to believe, erroneously, that DA DOUBLE ADVANTAGE is manufactured and

marketed by, or with the approval and permission of, Bayer. One instance of such

confusion has already occurred. The substantial investment Bayer has made in its

ADVANTAGE trademark and products, and the resulting goodwill it has achieved, will

be damaged by Defendants actions. That DA DOUBLE ADVANTAGE caused a dog to

vomit, and that the pet owner associated that product with Bayer and called Bayer to

complain, graphically illustrates the harm that Defendants lower-quality product will

cause if it continues to be sold under this counterfeit, highly confusing name.

44. The possibility that customers will falsely associate DA DOUBLE

ADVANTAGE not only with Bayer, but specifically with Bayers line of ADVANTAGE

products, threatens particularly significant harm. If a cat owner is confused into

believing that DA DOUBLE ADVANTAGE is the same as ADVANTAGE II or like

other ADVANTAGE products can be used on cats, he or she may be deceived into

believing that DA DOUBLE ADVANTAGE can also be used on cats. However, as

noted above, DA DOUBLE ADVANTAGE contains permethrin, a chemical compound

that can be toxic to cats. Any mistaken association between DA DOUBLE

ADVANTAGE and Bayers ADVANTAGE products may thus result in harm to pet

owners cats, with those consequences blamed on Bayer. That risk is exacerbated by the



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lack of any warning on the DA DOUBLE ADVANTAGE packaging that the product is

not meant for use on cats.

45. In addition to infringing Bayers rights to the ADVANTAGE trademark, the

Website Defendants have also engaged in trademark infringement and false advertising

by describing Ciplas DA DOUBLE ADVANTAGE on their websites as generic K9

Advantix (Defendants OTC Pet Meds, OKPet.com), the generic equivalent to K9

Advantix (Trusted Pet Meds), and K9 Advantix 55, Generic Imidacloprid/Permethrin

(Archipelago Suppliers, The Pharmacy Express). Contrary to these statements, DA

DOUBLE ADVANTAGE is not a generic version or equivalent to any Bayer product

sold in the United States, for all the reasons described above. Because of the Website

Defendants infringing use of the K9 ADVANTIX trademark to identify DA DOUBLE

ADVANTAGE, and their false and misleading statements, consumers are likely to

believe, wrongly, that DA DOUBLE ADVANTAGE is either Bayers current product K9

ADVANTIX II or its previous version K9 ADVANTIX, or is substantively identical to

either of those products.

46. Defendants OTC Pet Meds, Trusted Pet Meds, Archipelago Suppliers and

The Pharmacy Express have also infringed Bayers rights by selling into the United

States ADVANTIX products made by Bayers foreign affiliates for sale only outside the

United States. Because the ADVANTIX products these Defendants ship into the United

States differ in material ways from the K9 ADVANTIX II products Bayer currently sells

in the United States as well as the now-discontinued K9 ADVANTIX product,



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Defendants shipments are likely to confuse U.S. consumers. Consumers in the United

States are likely to be confused when they receive ADVANTIX with a different

formulation, packaging and labeling than any Bayer product legitimately available for

sale in the United States. Defendants OTC Pet Meds, Trusted Pet Meds, Archipelago

Suppliers and The Pharmacy Expresss shipments of ADVANTIX to the United States

also falsely and misleadingly imply that Bayer, not one of its foreign affiliates, is the

source of ADVANTIX and intends that product to be sold in the United States.

47. Further evidence of Defendants bad faith in their statements of equivalence

to K9 ADVANTIX is that they are also in violation of other U.S. laws. Under U.S. law,

it is unlawful to import products containing pesticides where the products are

unregistered and are labeled inaccurately. Federal Insecticide, Fungicide and Rodenticide

Act (FIFRA), 7 U.S.C. 136j(a)(1)(A) (unregistered); 136j(a)(1)(E) (misbranded) .

Similarly, it is unlawful to import into New York State products containing pesticides

that are not registered by the New York State Department of Environmental Conservation

and that are incorrectly labeled. ECL 33-0701. The Website Defendants also have

violated U.S. customs law because the shipments ordered by Bayers investigators bore

the customs description Health Products for Personal Use when, in fact, they contained

retail pet products containing pesticides. Section 592 of the Tariff Act of 1930, 19 U.S.C.

1592 (violation to ship products to the U.S. via airmail bearing inaccurate and

fraudulent customs declarations).



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FIRST CAUSE OF ACTION

(Registered Trademark Counterfeiting Under Section 34 of the Lanham Act, 15 U.S.C.1116 (d), Against All Defendants)

48. Bayer repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

49. Bayers ADVANTAGE trademark is a registered trademark with the U.S.

Patent and Trademark Office. The ADVANTAGE registration is incontestable.

50. DA DOUBLE ADVANTAGE, which has been sold in commerce through

Defendants, wholly incorporates Bayers registered ADVANTAGE trademark. As such,

the DA DOUBLE ADVANTAGE mark is substantially indistinguishable from the

registered ADVANTAGE trademark.

51. Defendants acts of trademark counterfeiting, unless restrained, will cause

great and irreparable injury to Bayer and to the business and goodwill represented by theBayer trademark, leaving Bayer with no adequate remedy at law.

52. By reason of the foregoing, Bayer is entitled to injunctive relief against

Defendants, restraining them from any further acts of trademark counterfeiting, and

recovery of statutory damages, and attorneys fees, pursuant to 15 U.S.C. 1117(b)-(c)

by reason of Defendants aforesaid acts.



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ADVANTAGE trademark, and to the business and goodwill represented thereby, in an

amount that cannot be ascertained, leaving Bayer with no adequate remedy at law.


Defendants, restraining them from any further acts of trademark infringement, and

recovery of Defendants profits obtained by reason of Defendants aforesaid acts.

THIRD CAUSE OF ACTION

(Trademark Infringement and False Designation of Origin Under Section 43(a)

of the Lanham Act, 15 U.S.C. 1125(a), against All Defendants)



61. Bayers ADVANTAGE, ADVANTAGE II and ADVANTAGE MULTI

trademarks have been used extensively in commerce and have acquired substantial

secondary meaning.

62. As set forth above, Defendants have manufactured, sold, distributed and

advertised DA DOUBLE ADVANTAGE bearing marks, words, terms, names and

symbols that are confusingly similar to Bayers ADVANTAGE, ADVANTAGE II and

ADVANTAGE MULTI trademarks and that falsely and misleadingly imply that Bayer is

the source and origin of DA DOUBLE ADVANTAGE and intends that product to be

sold in the United States. The DA DOUBLE ADVANTAGE mark is confusingly similar

to the ADVANTAGE, ADVANTAGE II and ADVANTAGE MULTI marks and is being



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used on similar products distributed in the same channels of commerce as those Bayer

uses.

63. Defendants actions have caused and are likely to cause confusion and

mistake and to deceive the potential consumers as to the source, origin or sponsorship of

DA DOUBLE ADVANTAGE sold in the U.S.

64. The unauthorized use of these trademarks constitutes trademark

infringement, with consequent damages to Bayer and the goodwill symbolized by these

marks, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

65. Defendants actions, including the unauthorized use of these trademarks in

interstate commerce, have caused great and irreparable injury to Bayer, these marks, and

the business and goodwill represented thereby, in an amount that cannot be ascertained,

leaving Bayer Healthcare with no adequate remedy at law.


Defendants, restraining them from any further acts of trademark infringement, and

recovery of Defendants profits obtained by reason of Defendants aforesaid acts.

FOURTH CAUSE OF ACTION

(False Advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), againstthe Website Defendants)





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68. The false, misleading and deceptive statements set forth above are material

and will tend to deceive U.S. consumers.

69. The Website Defendants, in connection with goods and services distributed

in interstate commerce, have made and are continuing to make false, deceptive and

misleading descriptions and representations of fact in commercial advertising and

promotion, which misrepresent the nature, characteristics and qualities of Bayers and

Ciplas goods, services and commercial activities, in violation of 15 U.S.C. 1125(a).

70. These violations have injured and will continue to injure Bayer and the

public, causing deception, confusion and damage in an amount that cannot presently be

ascertained.

71. The Website Defendants acts of false advertising and unfair competition

have caused irreparable injury to Bayer and, unless restrained, will cause further

irreparable injury, leaving Bayer with no adequate remedy at law.

72. By reason of the foregoing, Bayer is entitled to permanent injunctive relief

against the Website Defendants restraining further acts of false advertising and unfair

competition and requiring the Website Defendants to correct their false and misleading

statements, and to recover damages caused by reason of the Website Defendants

aforesaid acts.



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FIFTH CAUSE OF ACTION

(Deceptive Acts and Practices under New York Statutory Law, Against All Defendants)



74. Defendants acts as described above constitute deceptive acts and practices

and false advertising in violation of N.Y. Gen. Bus. Law 349-350.

SIXTH CAUSE OF ACTION

(Unfair Competition Under New York Statutory Law, Against All Defendants)75. Bayer repeats and realleges each and every allegation in the foregoing


76. Defendants acts as described above, constitute unfair methods of

competition under N.Y. Gen. Bus. Law 360-o.

SEVENTH CAUSE OF ACTION

(Trademark Infringement Under New York Law, Against All Defendants)



78. Defendants acts, as described above, constitute trademark infringement

under N.Y. Gen. Bus. Law 360-k.



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EIGHTH CAUSE OF ACTION

(Common Law Unfair Competition, Against All Defendants)



80. Defendants acts as described above constitute unfair competition in

violation of New York state common law.

PRAYER FOR RELIEF

WHEREFORE , Bayer respectfully requests that this Court order that Cipla and

the Website Defendants, including their officers, directors, employees, attorneys, agents,

representatives, successors and assigns and all persons in active concert or participation

with any of them, be:

(a) enjoined and restrained from acquiring for resale,

distributing, circulating, selling, offering for sale, advertising, promotingor displaying, or being involved in the acquisition for resale, distribution,

circulation, sale, offer for sale, advertisement, promotion, or display of, in

the United States, DA DOUBLE ADVANTAGE or any other pet

medicine products bearing Bayer trademarks;

(b) enjoined and restrained from using any false designation of

origin or false description or representation or any other thing calculated

or likely to cause confusion or mistake in the mind of the trade or public

or to deceive the trade or public into believing that the pet medicine



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products sold by Defendants using the Bayer trademarks are Bayer

products;

(c) enjoined and restrained from acquiring for resale,

distributing, circulating, selling, offering for sale, advertising, promoting

or displaying, or being involved in the acquisition for resale, distribution,

circulation, sale, offer for sale, advertisement, promotion, or display of, in

the United States, any pet medicine products made by foreign affiliates of

Bayer that are not intended for sale in the United States, including

ADVANTIX;

(d) enjoined and restrained from making any false or

misleading statements in connection with the advertising, promotion or

sale in the United States of DA DOUBLE ADVANTAGE (or the same

product under a different name), including any statements that DA

DOUBLE ADVANTAGE (or the same product under a different name) is

equivalent to or a generic version of any Bayer pet medicine product

sold in the United States;

(e) directed to recall from any and all channels of distribution

any and all infringing products and to take affirmative steps to dispel the

false impressions that heretofore have been created including but not



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limited to corrective advertising directed to the trade, retail establishments

and consumers; and

(f) directed to file with the Court and serve on counsel for

Bayer within thirty (30) days after entry of any injunction issued by the

Court in this action, a sworn written statement pursuant to 15 U.S.C.

1116(a) setting forth in detail the manner and form in which Defendants

have complied with any injunction which the Court may enter in this

action;

Bayer also respectfully requests an order:

(g) directing Defendants to account to Bayer for their profits

and ordering that Bayer recover its damages arising out of the aforesaid

acts of infringement in a sum equal to three times such profits or damages

(whichever is greater) pursuant to 15 U.S.C. 1117(a) and N.Y. Gen. Bus.

Law 349(h) and 360-m;

(h) awarding Bayer its attorneys fees along with the costs and

disbursements incurred herein as a result of Defendants intentional and

willful infringement, pursuant to 15 U.S.C. 1117 and N.Y. Gen. Bus.

Law 349(h) and 360-m;



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(i) awarding Bayer statutory damages pursuant to 15 U.S.C.

1117(c) by reason of Defendants counterfeiting of Bayers federally

registered trademarks; and

(j) awarding Bayer Healthcare such other and further relief as

the Court deems just and proper.

Dated: New York, New York September 12, 2011

DEBEVOISE & PLIMPTON LLP

By: /s/David H. BernsteinDavid H. Bernstein ([email protected])Michael Schaper ([email protected])Christopher J. Hamilton ([email protected])Benjamin Sirota ([email protected])

919 Third Avenue New York, New York 10022Tel. (212) 909-6696Fax (212) 521-7696

Attorneys for Plaintiff Bayer HealthCare LLC



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EXHIBIT A



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EXHIBIT B



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EXHIBIT C



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complaint bayer cipla

Documents