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Procedural Order No. 5

1. Reliefs sought by the Parties

1.1.
The Claimants’ reliefs for their claims are set out in paragraphs 223 to 228 of the Claimants’ Opening Brief in support of their claims dated 16 May 2008 ("Claimants’ Opening Brief), as well as the Claimants’ Statement of Relief Requested by Claimant Nautilus Hyosung America, Inc. dated 3 November 2008 ("Claimants’ Statement of Relief). The Claimants also set out a summary of the reliefs that they request in Appendix 3 of the Claimants’ Post-Hearing Brief.
1.2.
The Respondent’s reliefs for its counterclaims are set out in paragraphs 321 to 325 of the Respondent’s Opening Brief in support of its counterclaims and Response to Claimants’ Opening Brief ("Respondent’s Opening Brief) dated 15 July 2008, as well as the Respondent and Counter-Claimant’s Statement Regarding Relief as it relates to Nautilus Hyosung America, Inc. dated 12 November 2008.
1.3.
Having carefully considered the reliefs that the Parties request for their respective claims and counterclaims, I consider that I require further submissions from the Parties on the respective reliefs that they are seeking.
1.4.
In particular, the Parties must submit on the prayers for reliefs sought by the other side, and whether it is possible to perform the respective prayers for reliefs in the manner prayed for by the respective Party(ies) seeking such reliefs.
1.5.
Accordingly, the Claimants must submit on the prayers for reliefs that the Respondent seeks for its counterclaims, and (assuming that I find in favour of the Respondent’s counterclaims) whether it is possible to perform the prayers for reliefs in the manner that the Respondent had prayed for.
1.6.
Likewise, the Respondent must submit on the prayers for reliefs that the Claimants seek for its claims, and (assuming that I find in favour of the Claimants’ claims) whether it is possible to perform the prayers for reliefs in the manner that the Claimants had prayed for.
1.7.
In particular, the Parties should address me on the following issues (where relevant).

1.7.1 What is the factual situation concerning the number of Modified Hyosung ATMs containing Hantle CDUs that are still in the Respondent’s possession?

1.7.2 I note that, in the Claimants’ Statement of Relief, the Claimants state that production of the Respondent’s sales records (which is necessary to confirm the date of such sales) has been deferred to Phase II of this Arbitration, as this is primarily a damages issue.1 Nonetheless, assuming that I find that the Respondent breached its co-branding obligation under Section 6 of the 2005 Distributorship Agreement to sell (i) the MB-2100T ATMs with the "Hyosung" and "Tranax" marks and (ii) the MBS-5000 ATMs with the "Hyosung" mark by wrongfully removing the "Hyosung" trademark from the MB-2100T and MBS-5000 ATMs that the Respondent sold, and improperly adding its own "Tranax" trademark to the MBS-5000 ATMs, what is the factual situation concerning the number of MB-2100T and MBS-5000 ATMs without the "Hyosung" mark that are still in the Respondent’s possession?

1.7.3 Assuming that I find in favour of the Claimants, what are the bases on which Nautilus Hyosung America joins in the following claims.

(a) A request for an award of damages to be assessed in Phase II, (i) to the extent that such damages are based on Modified ATMs that the Respondent sold on or after 29 February 2008, and/or (ii) are based on the continuing damage caused by the use of such Modified ATMs on or after 29 February 2008.

(b) Claimants’ requests for injunctive relief in paragraphs 223(c)2 and (d)3 of the Claimants’ Opening Brief which are directed to remedying the continuing present harm caused by the Respondent’s sale of illegally altered ATMs.

(c) Claimants’ requests for declaratory relief in paragraphs 223(a)4 and (b)5 of the Claimants’ Opening Brief, which are directed to the illegal nature of the Respondent’s past sales of Modified ATMs, to the extent that the Respondent sold Modified ATMs on or after 29 February 2008.

1.7.4 Under U.S. trademark law, can a party claim both an accounting of profits and damages to be assessed for trademark infringement, or must the claimant elect between the two remedies?

1.7.5 Assuming that I find that the Respondent infringed the Claimants’ rights in the "Hyosung" and "Mini-Bank" trademarks in respect of the Respondent’s sale of modified Hyosung ATMs (in which the Respondent replaced the original Hyosung CDU with a Hantle CDU, and sold bearing the "Hyosung" and "Mini-Bank" trademarks) (Claimants’ Claim 5), what is the relevant period for which the Respondent has to provide an accounting of profits for the infringement of the "Hyosung" and "Mini-Bank" trademarks respectively?

1.7.6 Assuming that I find that the Claimants infringed the Respondent’s trademark rights by promoting and selling "Mini-Bank" ATMs in the U.S. and Canada without the Respondent’s permission (Respondent’s Counterclaim 4), what is the relevant period for which the Claimants have to provide an accounting of profits made from their improper sale of Hyosung products that used the Respondent’s "Mini-Bank" mark?

2. Pursuant to the above, I DIRECT as follows.

2.1.
Parties must file their respective briefs setting out their comments on the reliefs sought by the other side (the "Briefs") by Friday, 29 January 2010.
2.2.
The Parties’ respective Briefs must submit on the issues set out in paragraphs 1.7.1 to 1.7.6 above (where relevant).
2.3.
The Parties’ respective Briefs must be accompanied by a separate bundle of all legal authorities, exhibits, and relevant evidence referred to in the Brief (the "Bundle").

Dated this 22nd day of January 2010

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