Sulzer Mixpac AG v. DXM Co., Ltd. and Dentazon Corporation

Background

Defendants asked for permission to file an amended and supplemental answer and counterclaims. The court treated defendants’ pre-motion letter as a motion. In an earlier order, the court had dismissed defendants’ antitrust and unfair-competition counterclaims in part with prejudice and in part without prejudice. The court later granted Sulzer Mixpac AG’s summary-judgment motion and denied its request for a permanent injunction.

New Alleged Antitrust Violations

Defendants sought to add a claim based on alleged new antitrust violations. They asserted that Sulzer Mixpac AG had maintained its Candy Color trademark registrations with the United States Patent and Trademark Office, maintained exclusion orders with U.S. Customs and Border Protection, and renewed one registration in December 2024.

The court relied on a prior appellate decision involving Mixpac’s Candy Colors, which held that the use of colors to identify mixing-tip size was functional and therefore not protectable as trade dress. The court rejected Sulzer Mixpac AG’s argument that the registrations should not yet be treated as cancelled because the district court had not entered a final order. The court stated that the appellate decision was a final order holding that the trademarks at issue were functional. It also found that adding this counterclaim would not prejudice Sulzer Mixpac AG because it related to defendants’ unclean-hands contentions and was not expected to require significant additional discovery. The court therefore granted the motion to allow defendants to amend to include a claim based on the alleged new violations.

Earlier Alleged Antitrust Violations

Defendants also sought to present an edited version of their earlier counterclaims, alleging that Sulzer Mixpac AG used monopoly power to coerce defendants into entering a settlement agreement. Defendants did not provide information explaining what edits they intended to make. Because the court lacked enough information to determine whether the proposed edits had merit—and because edits based on information defendants already knew could be untimely—the court denied the motion to allow a claim based on the alleged earlier violations.

Ruling and Next Steps

The court granted in part and denied in part defendants’ motion for leave to file an amended and supplemental answer and counterclaims. The parties were ordered to propose a discovery schedule concerning damages and the remaining claims by October 30, 2025, and to appear for a settlement conference on November 25, 2025. Judge Loretta A. Preska signed the order.