* Fresh Del Monte sued Del Monte Foods
* Lawsuit claimed consumer confusion over fruit products
* Jury had awarded Fresh Del Monte $13.15 mln
By Jonathan Stempel
March 28 A federal judge on Thursday awarded
Fresh Del Monte Produce Inc a permanent injunction in
its long-running licensing dispute with Del Monte Foods Co, the
canned produce and pet food company that spun it off in 1989.
U.S. District Judge Sidney Stein in Manhattan awarded Fresh
Del Monte much of the relief it requested, after a federal jury
last April 6 ordered Del Monte Foods to pay the fresh fruit and
vegetable company $13.15 million of damages.
A growing number of consumers have in recent years been
seeking out fresh fruit products, amid increasing awareness of
the importance of maintaining a healthy diet.
In a 2008 lawsuit, Fresh Del Monte claimed it had an
exclusive right to sell fresh fruits and vegetables under the
Del Monte name.
The Coral Gables, Florida-based company also accused Del
Monte Foods of infringing its trademark right by selling
preserved fruit in plastic cups, and misleading consumers into
believing that the fruit was fresh.
In awarding damages, the jury found that San Francisco-based
Del Monte Foods breached the companies' licensing agreement in
selling products that contained bananas, berries, melons,
papayas and pineapples.
It also said Del Monte Foods violated a federal trademark
law known as the Lanham Act in packaging and selling its Fruit
Bowl, Fruit Naturals, SunFresh and Superfruit products, and in
print advertising calling its products "Fruit Undressed."
Following the verdict, Fresh Del Monte asked for a permanent
injunction against further licensing and Lanham Act violations.
The injunction that Stein issued bans Del Monte Foods from
using the Del Monte trademark on products containing any of the
five fruits and intended to be chilled at the point of sale, and
from entering into related sales and distribution agreements.
It also bans Del Monte Foods from pasteurizing or adding
preservatives to its fruit products without stating this on the
labels, and from telling consumers that its fruit products "must
be refrigerated" unless it has test results to back it up.
The "Fruit Undressed" campaign was also halted but future ad
campaigns need not say Del Monte Foods products are preserved.
Stein rejected Fresh Del Monte's request for more regulation
of Del Monte Foods' shipping and storage procedures.
He also declined to award Fresh Del Monte attorneys fees and
interest on the Lanham Act claims, but awarded interest on the
breach of contract claim.
Anthony Dreyer, a partner at Skadden, Arps, Slate, Meagher &
Flom representing Fresh Del Monte, said he was pleased with
Stein's decision. "Issuance of a permanent injunction is an
important ruling not just for Fresh Del Monte, but for consumers
of fresh fruit products as well," he added.
Arturo Gonzalez, a partner at Morrison & Foerster who
represents Del Monte Foods, also said he was pleased with the
decision, and that the company has "already voluntarily taken
all of the corrective measures" the court requested.
Del Monte Foods brands include Del Monte, College Inn,
Contadina, Meow Mix, Milk-Bone and 9Lives. It was bought in 2011
by investors including private equity firms Kohlberg Kravis
Roberts & Co, Vestar Capital Partners and Centerview Capital LP.
The case is Fresh Del Monte Produce Inc v. Del Monte Foods
Co et al, U.S. District Court, Southern District of New York,