IP trademark litigation

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:

1. The action is brought by the registered trademark owner, who in the lawsuit is called the plaintiff;
2. The plaintiff files a trademark infringement lawsuit before the necessary courts, demanding an injunction on the infringing activities accompanied with compensation due;
3. The defendant is then informed about the lawsuit and is given necessary time to reply to the accusation;
4. 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;
5. The plaintiff, on the other side, is required to provide evidence to support his/her allegations against the defendant;
6. 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;
7. 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.