Atrademark litigation is a process of taking a case through court that is similar to a civil lawsuit. ln a trademark conﬂict, to institute a lawsuit there should be a legal cause of action such as an infringement. A trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees.
In other words, trademark litigation has to do with any litigation that essentially involves issues, matters and disputes relating to trademarks. The most common is trademark infringement litigation. This is a civil litigation action.
Its remedies can be prompt injunction on further infringement and due compensation for all damages inﬂicted to the business of the registered trademark owner.
PROCESS OF LITIGATION
Filing a trademark infringement lawsuit at the place of infringement before the courts of law is a process followed by investigations and production of evidence. This action is ﬁled by the registered owner of the infringed trademark, seeking a complete injunction on the continuance of infringing activities, and recovery of compensation.
Stages involved in trademark litigations include:
- The action is brought by the registered trademark owner, who in the lawsuit is called the plaintiff;
- The plaintiff ﬁles a trademark infringement lawsuit before the necessary courts, demanding an injunction on the infringing activities accompanied with compensation due;
- The defendant is then informed about the lawsuit and is given necessary time to reply to the accusation;
- In most cases, the defendant may not agree with the allegations. However he/she is required to provide enough evidence to support his/her case;
- The plaintiff, on the other side, is required to provide evidence to support his/her allegations against the defendant;
- The judge is then left with the evidence presented from the plaintiff and defendant in order to establish if there is actually an infringement or not. The judge, after proper examination of the evidence presented, passes a resolution or judgment;
- The case enters the trial phase for the best resolution.
FACTORS FOR CONSIDERATION
Factors considered by the judge in determining whether there was an infringement usually include:
- Whether the plaintiff has a valid trademark registered;
- Whether the trademark is being used by the defendant;
- Whether the defendant uses the mark in commerce;
- Whether that use is connected to the offer, distribution or advertising of a product;
- Whether the defendant’s use of the trademark is likely to confuse consumers.
Possible remedies for IP trademark litigation include but are not limited to:
- Applications for emergency injunctive reliefs;
- Temporary restraining orders;
- Preliminary injunctions;
- Authorization for ex parte court orders for the seizure of counterfeited materials when it can be shown that the defendant would be likely to attempt to conceal or transfer the materials;
- Destruction of infringement products and other materials bearing the infringement mark.
Ex parte seizure. Under this act, an aggrieved party may seize the counterfeit goods, business documents and machines used, followed by court order.
Conditions taken by the court before granting an ex parte seizure order. The courts, however, will not grant an ex parte seizure order unless certain conditions are met by the applicant. These conditions include:
- The applicant is to know where the goods to be seized are located;
- The ex parte seizure will show that there was trademark infringement;
- An ex parte seizure is the only order that is adequate;
- The applicant speciﬁes the time period, and that the seizure will occur within a limited timeframe;
- The seizure is not publicized;
- The harm to the trademark holder is greater than the harm to the counterfeiter;
- Immediate harm will occur without the seizure to the trademark holder;
The person obtaining the order provides security to cover the damages that the adverse party may suffer due to the ex parte seizure.
In any trademark litigation action, it is necessary to know the outcome the client is hoping for, and what it means to his/her business. Litigation is not always the answer, and there may be better ways to accomplish what the client has in mind.
There are, however, cases where the design or trademark of the client may be at stake, and in such cases litigation may be the only option to protect his/her interests or rights. In other cases, compensation may be a better option. It is important to know the evidence that is relevant to be presented in courts. An IP attorney must always identify the risks and weigh the possible rewards.
Becky Orock is a barrister and trademark attorney at Minyogog & Associates Law Firm in Cameroon. She can be contacted on +237 222228365 or by email at firstname.lastname@example.org