Supercell Oy v. Bandai Gua Gua Model Toys Store

Background

Supercell Oy alleged that the defendants were manufacturing, importing, exporting, advertising, distributing, displaying, offering for sale, and selling counterfeit products through user accounts and merchant storefronts on Alibaba and/or AliExpress. The court found that Supercell owned federal registrations for the BRAWL STARS and BRAWL marks, that the marks were being used in commerce, and that the defendants were not authorized distributors or licensees. Based on the submissions, the court found that Supercell was likely to prevail on its claims under the federal trademark statute, known as the Lanham Act, and related common-law claims.

The court also found a risk of immediate and irreparable harm. It relied on evidence that at least one product purchased by Supercell’s counsel and shipped to New York appeared counterfeit because of its packaging, materials, coloring, and lower price. The court found that consumers could be confused or disappointed, harming Supercell’s reputation and goodwill, and that defendants might hide or transfer products, records, and sales proceeds if they received advance notice.

Rulings

The court stated that Supercell’s application was GRANTED IN PART AND DENIED IN PART.

Temporary restraining order. The court issued a temporary restraining order without notice for 14 days from April 2, 2025, and any further period allowed by court order. It restrained the defendants from dealing in counterfeit products or products bearing the Brawl Stars marks or confusingly similar marks; operating their user accounts and merchant storefronts in violation of the order; infringing Supercell’s marks; engaging in conduct likely to confuse or deceive the public; and concealing, destroying, transferring, or disposing of counterfeit products, records, or related assets. The order also covered persons acting together with defendants who received actual notice.

Asset restraint. The court ordered financial institutions, within five days after receiving service, to locate and attach defendants’ financial accounts and assets and provide written confirmation to Supercell’s counsel. The order restricted covered persons from transferring, withdrawing, disposing of, or otherwise dealing with those assets until further order.

Alternative service. The court granted Supercell’s motion for alternative service as to the one defendant with a false or outdated address. Service could be made electronically using copies of the order, summons, complaint, and supporting papers delivered to email addresses identified through Alibaba and/or AliExpress, together with access to a secure website. The court denied alternative service as to the remaining 42 defendants because it found that their addresses were not shown to be unknown and that the Hague Convention governing service abroad did not permit the proposed email service in these circumstances. The court also found that Supercell had not shown that alternative service was appropriate for the third-party service providers or financial institutions.

Expedited discovery. The court authorized expedited discovery. Served defendants had to provide sworn information about their names, addresses, websites, user accounts, storefronts, sales, revenues, financial accounts, and compliance with the order. Supercell could also serve interrogatories and document requests. Financial institutions and third-party service providers were ordered to identify relevant accounts and storefronts and provide specified records and identifying information.

Other provisions. The court scheduled a telephone hearing for April 16, 2025, concerning Supercell’s request for a preliminary injunction and allowed defendants to oppose that request. Supercell had to post a $5,000 security bond. The complaint, supporting materials, application, declarations, exhibits, and order were to remain sealed until specified financial institutions and third-party service providers complied with the order. The court also required Supercell’s counsel to explain why the case should remain sealed, given the presumption that judicial documents are publicly accessible.

Classification basis. This order is classified as mixed because the court reached a preliminary merits conclusion that Supercell was likely to prevail on its trademark claims while disposing of the alternative-service request on a service-of-process threshold ground.