Trademark infringement
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, especially in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.[1]: 485–486
For the Wikimedia Foundation's policy on its own trademarks, see wmf:Trademark policy.
If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution.
In some jurisdictions a party other than the owner (e.g., a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
Contributory infringement[edit]
The Supreme Court first held that liability for trademark infringement could extend beyond direct infringers in Inwood Laboratories, Inc. v. Ives Laboratories, Inc.[28] The Supreme Court articulated the following standard for contributory infringement: "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily liable for any harm as a result of the deceit."[28]
For example, in Fonovisa, Inc. v. Cherry Auction, Inc.,[29] the United States Court of Appeals for the Ninth Circuit imposed secondary liability on a flea market landlord who provided the “necessary marketplace” for the sale of infringing goods. The court held that contributory trademark infringement existed because the landlord was willfully blind to its tenant’s ongoing infringement.
Remedies[edit]
Injunctive relief[edit]
Injunctions are court orders commanding that the infringer immediately cease its unlawful activities. A plaintiff will be entitled to injunctive relief for trademark infringement if they show probable success on the merits and the possibility of irreparable injury.[43]
Monetary relief[edit]
Pursuant to 15 U.S.C. § 1117(a),[44] a plaintiff can recover the infringer’s profits, any damages sustained, and the costs of the action. In assessing profits, the brand owner must prove only the gross amount of the defendant’s sales. Thereafter, the defendant has the burden of providing evidence of any amount that should be deducted.
An accounting of profits is proper in a trademark infringement case only where the defendant engages in willful infringement, meaning that the defendant attempted to exploit the value of an established name of another.[45] Alternatively, a plaintiff may recover damages incurred if they show a reasonable forecast of lost profits.
Globally[edit]
The ACTA trade agreement, signed in May 2011 by the United States, Japan, Switzerland, and the EU, requires that its parties add criminal penalties, including incarceration and fines, for copyright and trademark infringement, and obligated the parties to actively police for infringement.[46][47][48]
In many countries with common law, a trademark which is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings under statute. Instead, the owner may be able to commence proceedings under the common law for passing off or misrepresentation, or under more general legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.