Remedies for Infringement

You can receive a variety of trademark infringement remedies if somebody uses your mark without your permission.

Under the Lanham Act, there are several statutory remedies for trademark infringement, including:

  • Accounting for profits and damages
  • Injunctive relief
  • Treble damages in certain circumstances
  • Attorney's fees and costs

Because trademark infringement remedies are cumulative, you may be able to receive profits and damages from the person that infringed on your trademark.

Courts are able to provide relief for trademark infringement thanks to the provisions outlined in Section 135 of the Trademarks Act, 1999. In addition to the remedies listed above, any items illegally using the trademark in question must be delivered for destruction. If a person uses someone else's registered trademark for the purpose of misleading or confusing consumers, they can be subject to a civil trial.

The original owner of the trademark that has been harmed by its misuse will be the plaintiff. Imported products are subject to a civil trial of the dilute. When a famous trademark is diluted, the most common remedy is injunction.

It is very rare to receive monetary damages in these cases, as it must be clear that the defendant intended to harm the trademark to be awarded this remedy.

What is Injunctive Relief?

Injunctions are frequently granted for trademark infringement, and are the go-to remedy in these cases.

There are a variety of ways that a court could grant injunctive relief. For example, the court could prevent the defendant from using the mark in all circumstances, could allow them to use the mark in limited scenarios, or could place geographic restrictions on where the mark can be used.

Although there is some variation from case to case, four issues will determine whether the court will grant injunctive relief. First, the court will decide if the plaintiff will be able to succeed based on the merits of the case. Second, the court will examine if the plaintiff has experienced irreparable harm. Third, the court will determine how an injunction would affect both the plaintiff and the defendant. Fourth, the court will decide if there is a public interest in granting an injunction.

Requiring that the defendant add a disclaimer whenever they use an infringing mark is another type of possible injunctive relief. Unfortunately, disclaimers are very hard to implement and there is little possibility that using a disclaimer will eliminate likelihood of confusion.

If the person who infringed on your mark was only printing the mark and was not aware that they were violating your rights, the only injunctive relief that you will be able to receive is preventing future printing of your mark.

When your trademark rights are infringed upon by your mark being printed in a periodical such as a newspaper or magazine, the injunctive relief available will be a prohibition on printing your mark in future issues of the periodical in question. This includes electronically transmitted periodicals. If preventing printing of your mark would delay the publication of the periodical, injunctive relief will not be available.

What is Monetary Recovery?

In trademark infringement cases, courts are allowed to provide monetary recovery in the form of costs, damages, and profits. It is possible for a plaintiff in a trademark infringement case to have experienced actual damage, meaning that the violation of their mark has impacted the reputation of their business or has lowered their sales. While recovering these actual damages is a possibility, it can be very difficult, as damage to the reputation of a business is hard to prove.

To receive actual damages, courts will usually require that you prove harm by demonstrating that your customers were deceived or confused. These damages are different from injunctive relief in that plaintiffs have a much higher burden of proof.

Simply proving likelihood of confusion will not result in damages if there is no proof that the business has actually been damaged by customer confusion. You can prove customer confusion by having customers testify directly or by providing evidence that shows sales were diverted from your business. It is also possible to use customer surveys to prove your case, although this is considered circumstantial evidence. It is sometimes possible for the plaintiff in a trademark infringement case to recover profits from the defendant.

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