- Trademark infringement is the interference with or violation of another party’s trademark rights through the unauthorized use of that party’s mark or a confusingly similar mark. The basic test for trademark infringement is whether the use of a trademark by one party is such that it can create a likelihood of confusion among consumers in the relevant marketplace in relation to an identical or similar trademark belonging to another party. A trademark does not have to be an exact copy of another mark in order to be considered infringing.
- The legal definition of infringement varies from one jurisdiction to another. The most common standards for infringement are (a) close similarity of a mark and its associated goods and/or services to a prior mark and its associated goods and/or services; or (b) use of a mark that creates a likelihood of confusion, in the course of trade, with a prior mark among the relevant consumers. Trademark law in some jurisdictions incorporates both concepts.
- The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant’s use of a mark has created a likelihood-of-confusion about the origin of the defendant’s goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant’s products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.
How can one redress infringement?
- Trademark laws typically provide for injunctive relief and damages as remedies for infringement. The availability of attorney’s fees as a remedy varies significantly both under specific trademark laws and under general legal procedures of various countries. Under some circumstances, and particularly where the goods are determined to be counterfeit, seizure, impoundment and destruction of the infringing goods may be available. Some jurisdictions allow for awards of statutory damages, enhanced damages, recovery of the infringer’s profits and other remedies.
- Furthermore, many jurisdictions recognize trademark-related criminal offenses, such as, among others, counterfeiting and forgery. A party guilty of such offenses may be liable for a fine, imprisonment or both.
- The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorney’s fees would also be available to a successful plaintiff.
- Relief can only be granted in case of passing off if it can be proved that the defendant has done something which is calculated to deceive. It is very essential to show that there has been a false representation. The plaintiff must show that the defendant has used the mark on the goods or in connection with them and that the mark has attained an association in the minds of the public.