Wenger S.A. v. OLIVET INTERNATIONAL INC.

Background

Olivet is defending trademark-infringement claims brought by Wenger. During discovery, Olivet served a request for documents relating to Wenger’s enforcement of its trademark rights. Wenger agreed to produce responsive documents in its possession, custody, or control.

Wenger and Swiss Brand had separately disputed Swiss Brand’s use of the word “Swiss” and a cross logo on luggage products. They entered into a settlement agreement on June 15, 2021, before discovery closed. The agreement was referenced in a joint filing in the related trademark proceeding, but Olivet said it did not learn of the agreement until Swiss Brand contacted it in May 2024. Olivet then asked Wenger to produce the agreement, but Wenger refused. Olivet also sought any other agreements between Wenger and third parties concerning enforcement of Wenger’s asserted trademarks.

The Parties’ Positions

Olivet argued that the Swiss Brand agreement fell within its discovery request and was relevant to the strength of Wenger’s trademarks. In a trademark case, the use of similar marks by third parties may bear on whether a mark is weak. Olivet also argued that Wenger should have produced the agreement during discovery or formally objected to producing it. It requested attorneys’ fees under Federal Rule of Civil Procedure 37 for having to bring the motion.

Wenger argued that Olivet should have located the related proceeding and requested the agreement earlier. Wenger also questioned the agreement’s relevance. The opinion states that Wenger had not disputed that the agreement was responsive to the original document request, but had not answered whether other third-party agreements existed.

Ruling

The court granted Olivet’s motion to compel. It found good cause for Olivet’s delay because the earlier litigation was covered by the discovery request, but the settlement agreement was not revealed to Olivet until May 2024. The court also found that the burden of producing the agreement was minimal, even though the agreement might not ultimately be especially relevant. The order directed production through its grant of the motion to compel; the motion had sought the Swiss Brand agreement and other responsive third-party agreements.

The court denied Olivet’s motion for attorneys’ fees. It attributed Wenger’s failure to disclose the agreement at least in part to a lack of clarity in Olivet’s original discovery request, making an award of expenses unjustified under the circumstances. The court expressly made no decision about whether the agreement would be admissible at trial. The Clerk of Court was directed to close docket entry 338.