Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

In the United States, trademark litigation is governed primarily by the Lanham Act (also known as the Trademark Act of 1946), a federal statute that establishes a national system for trademark registration, protection and enforcement.

While the Lanham Act provides nationwide protection, state laws also play a role in trademark litigation. Each state has its own statutory and common law protections for trademarks, which are enforceable in state courts.

Trademark rights in the United States are created through the use of a trademark in commerce – for example, through use:

• on goods or the packaging for goods; or
• in advertising for a service.

As soon as a party starts using a mark, it begins accruing 'common law' trademark rights. These rights:

• are generally enforceable in state and federal courts; and
• are limited to the geographic area in which the mark is used.

A trademark can be registered with the trademark office in the state in which it is used. The resulting state trademark registration provides trademark rights under that state's trademark laws. These rights are enforceable throughout the state in the state courts.

If the trademark is used in interstate commerce, it can be registered with the US Patent and Trademark Office (USPTO) under the Lanham Act. This federal trademark registration is enforceable throughout the United States in the federal courts.

Trademarks registered with the USPTO generally receive stronger protection in federal courts than unregistered marks. However, both registered and unregistered trademarks can be protected under the Lanham Act.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

The United States has entered into multilateral trademark agreements that aim to harmonise and simplify trademark registration and protection across different countries. The key agreements include the Madrid Protocol and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

The Madrid Agreement (1891) and Protocol (1989) (also known as the Madrid System) is an international treaty administered by the World Intellectual Property Organization. These agreements provide a system for international trademark registration, simplifying the process of protecting a trademark in multiple countries.

TRIPs (1994) is an international agreement administered by the World Trade Organization agreement. It:

• establishes the minimum standards for the protection of various forms of intellectual property, including trademarks, for member states; and
• outlines enforcement procedures.

The Paris Convention (1883) provides a framework for recognising and protecting trademarks in signatory countries. Key provisions of the agreement include:

• 'national treatment' (ie, foreign and domestic trademark owners are treated equally); and
• 'right of priority' (allowing a trademark owner to apply for registration in another Paris Convention country within a set timeframe after its initial application).

The United States has also entered into bilateral treaties providing for the reciprocal treatment of trademark rights. Such treaties are in force with the following nations:

• China;
• Ethiopia;
• Germany;
• Greece;
• Ireland;
• Israel;
• Italy; and

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

In the United States, the courts have the primary responsibility for interpreting the statutes creating the trademark laws through a process called 'statutory interpretation'. This process involves understanding the meaning of the statutes and applying them to specific cases. To interpret the statutes, courts consider various factors, including:

• the plain meaning of the text;
• the broader statutory context;
• canons of construction;
• legislative history; and
• how the law has been implemented.

This process helps to ensure consistency and adaptability in legal decision making.

The Lanham Act grants the federal courts – specifically the US district courts – and state courts jurisdiction over lawsuits involving trademark issues such as infringement and dilution. While plaintiffs can choose to file lawsuits in either federal or state court, the federal courts are often preferred for trademark disputes due to:

• judicial economy; and
• judges' familiarity with federal trademark law.

State courts may also address trademark issues concerning state trademark registrations or issues that arise under state law, such as common law trademark rights (acquired through use of a mark in commerce). In cases involving both federal and state trademark claims:

• federal law will apply to the federal claims; and
• state law will apply to the state claims.

Several agencies also play a role in interpreting and enforcing trademark laws in the United States.

The USPTO is the primary federal agency responsible for:

• implementing the laws related to trademarks; and
• overseeing the trademark registration process under the Lanham Act.

As such, it creates and implements the trademark rules and regulations in the United States.

The Office of the Federal Register compiles the rules created by the USPTO, along with rules from other agencies, into the Code of Federal Regulations (CFR). The rules and regulations concerning trademarks and other intellectual property are found in Title 37 of the CFR.

The Trademark Trial and Appeal Board (TTAB) is an administrative board within the USPTO. It handles adversarial proceedings involving trademark applications and registrations, such as oppositions to pending trademark applications and cancellations of existing trademark registrations.

At the state level, each state has its enacted its own trademark laws. These laws are implemented by the state's trademark office.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

Trademark litigation in the United States can be heard in both federal and state courts. While federal courts have original jurisdiction over cases involving federal trademark law, state courts have concurrent jurisdiction. State courts also hear trademark disputes involving common law trademarks or state-level trademark laws.

Generally, trademark infringement and validity can be decided in the same forum, particularly in the context of an infringement lawsuit. When a defendant is sued for trademark infringement, it can:

• raise the issue of the plaintiff's trademark invalidity as a defence; or
• file a counterclaim to challenge the validity of the trademark registration.

This allows the court to address both the alleged infringement and the validity of the trademark within the same legal proceeding.

The Trademark Trial and Appeal Board (TTAB) also adjudicates disputes related to the validity of trademark registrations. These disputes include:

• oppositions to new trademark applications; and
• petitions to cancel existing registrations.

The TTAB does not hear trademark infringement actions.

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

Trademark disputes in the United States can be heard and decided by several entities, including the courts and the TTAB.

Trademark owners can file civil lawsuits for trademark infringement in either state or federal court. The Seventh Amendment to the US Constitution guarantees a jury trial for legal damages, but not equitable remedies such as injunctions or accounting of profits. Therefore, who hears and decides a trademark dispute depends on the specific remedy sought by the trademark owner.

In other words, if the dispute includes a claim for legal (monetary) damages, the plaintiff will be entitled to a jury trial. However, a dispute that only seeks damages in the form of an injunction or defendant's profits (disgorgement) is generally not entitled to a jury and will be decided by the judge.

The TTAB is an administrative body that handles specific types of proceedings related to the validity of a trademark registration, including opposition and cancellation proceedings. The TTAB is composed of administrative trademark judges who have expertise in trademark law. In a dispute, a panel of three administrative judges typically hears and decides each case.

Many trademark disputes, however, are resolved outside of court through alternative dispute resolution methods, such as mediation and arbitration. In a mediation, a neutral third party (the mediator) helps the parties to reach a mutually agreeable settlement. In an arbitration, an impartial arbitrator makes a binding decision in the dispute.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

Yes, opportunities for forum shopping exist in many jurisdictions. 'Forum shopping' refers to the practice of litigants choosing the court or jurisdiction that they believe is most likely to provide a favourable judgment – often by selecting a jurisdiction with laws or procedures more favourable to their case. The choice can include factors such as:

• court expertise;
• applicable laws;
• procedural rules; and
• even potential jury selection biases.

Remedies also differ between jurisdictions, so a party may choose a forum that offers the largest damage awards or the potential for injunctive relief or monetary damages.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

Standing to sue for trademark infringement under the Lanham Act is generally held by:

• trademark registrants;
• anyone who has established rights through use in commerce; and
• their legal representatives, predecessors, successors and assigns.

Specifically, Section 32 of the Lanham Act grants this right to the trademark registrant. This includes:

• the owner of the registered trademark; and
• those who have acquired the right to use the trademark through legal means, including exclusive licensees.

Section 43(a) is significantly broader. The statute allows a suit to be brought by "any person who believes that he or she is or is likely to be damaged" by the infringing act. This includes:

• Anyone who has established rights through use in commerce, even without a registration;
• those who have acquired the right to use the trademark through legal means, including exclusive licensees; and
• non-exclusive licensees that can demonstrate a "commercial interest" that is likely to be damaged by consumer confusion.

To have standing to sue for trademark infringement, a party must demonstrate:

• a sufficient personal stake in the matter; and
• a cognisable interest in the trademark infringement.

In essence, they must show that:

• they have been harmed by the infringement; and
• the harm is likely to be redressed by a court ruling.

The party must also demonstrate a concrete injury or harm that it has experienced as a result of the trademark infringement. This can include:

• loss of sales;
• damage to reputation; or
• dilution of the trademark's value.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes, a trademark infringement suit can generally be brought against a foreign entity, but there are certain jurisdictional considerations that must be met.

To bring a lawsuit against a foreign entity in the United States, a court must have personal jurisdiction over that entity. This means the foreign entity must have sufficient 'minimum contacts' with the United States to make it fair and reasonable for a US court to exercise jurisdiction over it.

Further, the Supreme Court has clarified that the focus of a trademark infringement claim under the Lanham Act is the 'use in commerce' of the infringing mark. Thus, the foreign entity's infringing use must occur domestically (within the United States). This means a plaintiff generally cannot rely solely on foreign use of a trademark to bring a lawsuit in the United States.

Thus, while US trademark law (the Lanham Act) primarily focuses on domestic 'use in commerce', a foreign entity can be sued for trademark infringement in a US court if:

• it has sufficient contacts with the United States; and
• the infringing 'use in commerce' occurs within the United States.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes, a single infringement action can be brought against multiple defendants. This is common when the defendants are involved in the same transaction or a series of transactions related to the infringing activity. The key is to demonstrate a connection between the defendants' actions and the alleged infringement.

Joining defendants in a trademark infringement case is governed by Federal Rule of Civil Procedure 20(a)(2), which requires that:

• the right to relief against the defendants have arisen from the "same transaction, occurrence, or series of transactions or occurrences"; and
• there be a common question of law or fact among them.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Yes, a third party can seek cancellation of a national or international trademark registration. This is typically done through a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).

Any person that believes it is or will be damaged by a registration can file a petition for cancellation with the TTAB. Common grounds for cancellation include:

• non-use or abandonment;
• genericness or descriptiveness;
• likelihood of confusion; or
• if the registration was obtained through fraud.

The US Patent and Trademark Office (USPTO) has recently implemented two new procedures under the Trademark Modernization Act that allow any party to seek cancellation of a US trademark registration (including those based on Madrid Protocol) based on non-use.

A petition for expungement can be filed with the USPTO by any party to cancel a mark that has never been used in commerce. This petition can be filed between three and 10 years after the registration date of the contested registration.

A petition for re-examination can be filed with the USPTO by any party to challenge a registration based on a failure to use the mark in commerce on or before a relevant date. This petition must be filed within five years of the registration date of the contested registration.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A third party can seek a declaration of non-infringement or invalidity in the United States. This is done through a declaratory judgment action filed with a federal district court. Essentially, this allows a party to proactively seek a court ruling that its actions do not violate a trademark right or that a trademark is legally void, even if it has not been sued.

To file a declaratory judgment action, the third party (the potential infringer) must demonstrate that a 'case or controversy' exists between it and the trademark owner. This means that there is a genuine conflict or dispute about whether its activities infringe the trademark.

Similarly, a third party can seek the invalidation of a trademark through an opposition (before registration) or cancellation proceeding (after registration) filed with the TTAB.

Any person can file a trademark opposition if it believes that it will be damaged by the registration of a trademark by another party. This typically occurs when the newly filed mark is:

• confusingly similar to the opposer's existing mark; and
• used for related goods or services.

To have standing, the opposer must demonstrate a 'real' or 'legitimate' interest in the outcome of the registration, meaning that it will suffer some form of harm if the trademark is registered.

A third party can challenge the validity of a registered trademark in a cancelation proceeding if it believes that it will be harmed by the existing trademark registration. To have standing to file a trademark cancellation, a party must demonstrate:

• a 'real interest' in the outcome of the proceeding; and
• a reasonable belief that it will be harmed or damaged by the continued registration of the trademark.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

Trademark infringement occurs when someone uses a trademark without the permission of the owner in a way that is likely to cause confusion or deception among consumers about the source of goods or services.

4.2 How is infringement determined?

To establish trademark infringement, a trademark owner must prove that:

• a defendant is using a similar or identical mark in commerce; and
• this use is likely to cause confusion among consumers.

This requires demonstrating both:

• the validity of the plaintiff's trademark; and
• that the defendant's use is likely to deceive or confuse consumers about the source, sponsorship or affiliation of the goods or services.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

'Wilful trademark infringement' refers to the intentional and deliberate use of a trademark without authorisation, despite knowledge or reason to believe the use is unlawful. Wilful infringement can result in increased damages, including:

• triple damages;
• the defendant's profits; and
• the trademark owner's attorneys' fees.

To prove wilful infringement, the trademark owner must demonstrate that the defendant acted with:

• the intent to infringe the trademark; or
• the knowledge or reason to believe that its actions would cause confusion among consumers.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

Trademark enforcement actions can range from sending a cease and desist letter to initiating legal proceedings.

A cease-and-desist letter is a formal notification to an alleged infringer demanding that it stop using the infringing trademark. If the cease-and-desist letter fails to produce results, the trademark owner can file a lawsuit in either federal or state court.

Trademark owners can also:

• oppose a pending trademark application if they believe that the mark is confusingly similar to their own; or
• file a cancellation action against a trademark registration if they believe that the mark is not valid or is infringing.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

There is no set federal statute of limitations for trademark infringement claims, so courts generally look to state law, often using the limitation period for unfair competition or fraud, which can be three to six years. Additionally, a delay in taking action might be considered laches – a defence that prevents trademark owners from enforcing their rights if they unreasonably delay and prejudice the alleged infringer.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

There is no requirement that an alleged infringer be notified before a complaint is filed. However, once filed, the complaint must be properly served on the infringer, meaning that it must be officially notified that the lawsuit has been filed against it. This typically involves personal service or other methods approved by the court.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

In a trademark complaint, the plaintiff must:

• demonstrate:
• • ownership of a valid and legally protectable trademark; and
  • that the defendant's use of the mark is likely to cause confusion among consumers; and
• state the damages sought for the infringement.

In a trademark complaint, notice pleading requires the complaint to:

• clearly state the claim; and
• provide enough information to put the defendant on notice of the issues in the case.

It does not need detailed factual support, but it does need to make the plaintiff's right to relief plausible.

The key elements of notice pleading in a trademark complaint are as follows:

• The complaint must state the grounds for the court's jurisdiction.
• The complaint must clearly state:
• • the trademark infringement claim; and
  • the relief sought.
• The complaint should identify:
• • the trademark in question;
  • its ownership; and
  • when it was first used.
• The complaint must allege that the defendant is using the same or a similar trademark in commerce without the plaintiff's consent.
• The complaint must state that the defendant's use is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services.
• The complaint must specify the relief sought, such as an injunction or damages.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Yes, interim remedies are generally available in trademark litigation. These are temporary measures designed to prevent irreparable harm while the main case is ongoing.

A trademark temporary restraining order (TRO) is a short-term, emergency measure issued to immediately prevent the defendant from engaging in infringing conduct. It:

• is often issued without notice to the defendant; and
• usually lasts for a limited time – often 10 to 14 days, unless extended by the court.

The party seeking the TRO must demonstrate:

• a risk of immediate and irreparable harm; and
• the likelihood of success on the merits.

A preliminary injunction is a more permanent order that requires notice to the defendant and a hearing. It remains in effect until the court issues a final decision. To obtain a preliminary injunction, the plaintiff must demonstrate:

• a strong chance of winning the case on the merits;
• that without the injunction, it will suffer harm that cannot be adequately compensated by monetary damages;
• that the potential harm to the plaintiff outweighs the potential harm to the defendant if the injunction is granted; and
• that the injunction is in the best interests of the public, considering:
• • potential confusion; and
  • damage to consumers.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

When a preliminary injunction is granted, the court may require the plaintiff to post a security bond to protect the defendant if the injunction is later found to be unjustified.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

In a trademark proceeding before a court or the Trademark Trial and Appeal Board, disclosure involves revealing information and documents to the opposing party to prepare for trial and prevent surprises. This includes disclosing:

• witnesses;
• documents; and
• other relevant materials.

The disclosure process is governed by specific rules, including the Federal Rules of Civil Procedure, which outline initial disclosures and requirements for document production.

At the beginning of a case, parties must make initial disclosures of certain information, such as:

• the identity of their experts; and
• a summary of their opinions.

Throughout the litigation, parties must supplement the initial disclosures with new information, such as:

• newly discovered documents; or
• changes to expert witness opinions.

Before trial, through the discovery process, parties must disclose the evidence that they intend to use to support their case. The discovery process includes promulgating and responding to:

• requests for production of documents and things;
• interrogatories; and
• requests for admission.

The discovery process can also include:

• depositions of fact witnesses such as employees, owners, or third parties about their knowledge of the case; and
• expert discovery regarding the expert's opinion regarding issues such as "likelihood of confusion" among the public and damages.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

In a trademark case, third-party disclosures are essentially the sharing of information or evidence from individuals or entities that are not directly involved in the lawsuit (ie, neither the plaintiff nor the defendant). A common method for obtaining this information from third parties is through subpoenas. These are court orders compelling the production of documents or testimony. A party may also depose a third party (take sworn testimony) to gather information relevant to the case.

Third-party disclosure of information can be limited or prevented by the entry of a protective order. These orders manage and prevent the public dissemination of sensitive information that is not otherwise publicly available, such as:

• confidential commercial data; or
• personal identifying information.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

In the context of courts and legal proceedings, 'privilege' protects certain communications and relationships from being disclosed. This means that even if the information is relevant to a case, it may not be forced to be revealed because of the privileged nature of the communication.

Privileges are established to protect certain relationships and communications deemed important to public policy, fostering open communication and encouraging certain behaviours. Some common types of legal privileges include:

• attorney-client privilege; and
• work product privilege (which protects from discovery by opposing parties documents and tangible things prepared in anticipation of litigation or for trial).

Privilege is not absolute. There are exceptions where privilege can be waived or bypassed, such as when the client:

• is seeking legal advice to further a crime or fraud; or
• has waived the privilege.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

The 'exchange of evidence' refers to the process where parties in a lawsuit share relevant information, documents and other evidence with each other before a trial or hearing. This process, often called 'discovery', ensures a fair trial where all parties have access to the facts and evidence necessary to build their case.

Discovery includes various methods such as:

• requests for production;
• interrogatories;
• requests for admission; and

In the requests for production, parties can request:

• documents;
• emails; and
• other materials relevant to the case.

Discovery is generally broad, allowing parties to explore the facts relevant to the case, including those that may not be directly related to the infringing conduct but could shed light on the larger context.

Interrogatories are written questions served on the other party, which is requiring them to provide detailed answers under oath. Similarly, requests for admission are written requests requiring the other side to admit or deny certain facts under oath.

Parties can also conduct depositions of the other party, witnesses, and experts. A deposition is a formal interview conducted under oath, where an attorney questions a witness to gather information and preserve testimony.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

The discovery process involves the exchange of various forms of evidence, including:

• documents;
• photographs;
• witness statements;
• expert reports; and
• even tangible items.

Expert evidence is commonly used in trademark cases to establish the likelihood of consumer confusion between similar marks. Experts can provide opinions on factors which help to determine whether consumers are likely to be confused about the source of the goods or service, such as:

• the similarity of marks;
• the relatedness of goods/services; and
• the strength of the mark.

To prepare their opinions, experts will often design and conduct surveys to:

• gather real-world consumer perceptions; and
• provide evidence of potential confusion.

Surveys can also evaluate the strength and recognition of a mark.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

Yes, evidence gathered during criminal proceedings related to trademark infringement can be used in a civil trademark infringement case. While the civil case is independent of the criminal outcome, the evidence can be highly relevant and probative. Several factors must be considered, including:

• the nature of the evidence;
• the purpose of its use; and
• potential restrictions.

For example, evidence collected in a criminal investigation, such as evidence of the unauthorised use of a trademark, can be used in the civil case to:

• prove infringement; and
• establish the likelihood of consumer confusion.

7.4 What are the applicable standards of proof?

In trademark litigation, the standard of proof required to prove trademark infringement, dilution, and unfair competition is generally a 'preponderance of the evidence'. This means that the plaintiff must show that the evidence is more likely than not in its favour. However, for certain issues such as trademark abandonment, a higher standard of 'clear and convincing evidence' may be required. The specific standard may vary depending on:

• the jurisdiction; and
• the specific claim being asserted.

7.5 On whom does the burden of proof rest?

The trademark owner typically bears the burden of proving its case, including demonstrating:

• the validity of its mark;
• the likelihood of confusion; and
• any other elements of its claim.

To prove trademark infringement, a plaintiff must establish that a defendant's use of a mark is likely to cause confusion among consumers, demonstrating that:

• the defendant's mark is similar to the plaintiff's;
• the goods or services are related;
• it has a valid and legally protectable trademark; and
• it owns the mark.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

In trademark litigation, several defences can be used to rebut claims of infringement. These include:

• descriptive fair use;
• nominative fair use;
• laches;
• unclean hands; and
• challenges to the validity of the trademark itself.

Additionally, the First Amendment (freedom of speech) can be used as a defence in some cases.

The descriptive fair use defence applies when a trademark is used in a descriptive sense, not to identify the source of a product, but to describe a feature or characteristic of it. For example, if a person uses 'Ford' to describe its Ford truck, this is fair use, even though 'Ford' is a registered trademark.

Nominative fair use arises when a party uses a trademarked term to refer to a competing product or service, but only for the purpose of identifying the competing product. It is a necessary use, not an infringement.

Laches is an equitable doctrine that bars a trademark owner from pursuing a claim if it has delayed unreasonably in enforcing its rights, causing prejudice to the defendant. It essentially prevents trademark owners from 'sleeping on their rights' and then claiming them later when it would be unfair to the other party.

The unclean hands defence focuses on the plaintiff's own misconduct. If the trademark owner has engaged in illegal or unethical behaviour, it may be barred from seeking relief in court.

A defendant can also defend itself by challenging the validity of the plaintiff's trademark registration, potentially arguing that the mark has been abandoned or is generic.

The specific defences available and their applicability depend on:

• the facts of the case; and
• the applicable law.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

In a trademark litigation, the defendant may file a counterclaim for revocation or invalidation, also known as a counterclaim for cancellation. This is a legal action that a defendant can file in response to a trademark infringement lawsuit. It challenges the validity or enforceability of the plaintiff's trademark, seeking to have it invalidated or revoked.

The counterclaim aims to defeat the plaintiff's infringement claim by arguing that its trademark:

• is invalid; or
• cannot be enforced.

Counterclaims for cancellation can be based on several grounds, including:

• priority (the defendant was using the mark before the plaintiff);
• descriptiveness (the mark is merely descriptive and should not have been registered); and/or
• fraud (the plaintiff committed fraud when applying for the registration).

In the infringement proceedings, a counterclaim for revocation or invalidation is typically filed as a defence. It is filed at the same time as the answer to the infringement complaint.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

A trademark can become unenforceable or invalid under several circumstances, including:

• abandonment;
• failure to use the mark; or
• conflict with existing trademarks.

Additionally, if a trademark is deemed generic or descriptive, or lacks distinctiveness, it may also become unenforceable.

For example, if a trademark owner stops using a mark, it may be considered to have abandoned the mark. This can happen if it does not use the mark for a continuous period of three years, after which the courts will likely consider the mark abandoned.

Similarly, if a trademark becomes generic – meaning that it is widely used to describe a type of product or service rather than a specific brand – it loses its distinctiveness and may be unenforceable.

Even if a trademark is valid, it may become unenforceable if the trademark holder fails to actively enforce its rights against infringers.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

A trademark settlement is a resolution to a dispute, such as a lawsuit or application opposition, where the parties agree on terms to resolve the matter without a full trial. This can involve various approaches, including:

• negotiating a licensing agreement;
• abandoning a pending application; or
• finding other mutually agreeable solutions.

Mediation is a voluntary process where a neutral mediator helps parties reach a settlement. Some US district courts, such as the Northern District of Illinois, have local rules that require parties in trademark cases to explore mediation. However, it is generally not mandatory nationwide. Rather, it is encouraged as an early step in resolving disputes.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Yes, legal proceedings can generally be stayed or discontinued in view of settlement discussions.

Staying proceedings involves temporarily halting the legal process, giving parties time to focus on negotiations without the pressure of imminent court deadlines. This can be requested through a motion to stay proceedings pending settlement, which outlines:

• the reasons for the request; and
• the status of negotiations.

Discontinuation, on the other hand, means formally withdrawing the lawsuit – typically when a settlement agreement has been reached. The formal process usually involves filing a stipulation of discontinuance with the court, signifying the parties' agreement to end the case.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

Generally, parties must inform the court when a case has been settled, particularly if a lawsuit has been filed.

If a lawsuit is ongoing, the attorneys representing the parties will inform the court that a settlement has been reached. The court will then typically issue a 'court order of settlement', which outlines the steps required to finalise the settlement, including the submission of necessary paperwork.

The parties must submit a formal settlement agreement to the court, which outlines the agreed-upon terms. The settlement agreement then becomes a legally binding contract, meaning that both parties are obliged to adhere to its terms.

Once the court is informed and the settlement is finalised (including signing of the settlement agreement and any payment), the lawsuit will typically be dismissed, usually with prejudice, meaning that the case cannot be refiled.

If stipulated by the parties, the settlement agreement may include a confidentiality clause, preventing the details of the settlement from being publicly disclosed.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

In general, court proceedings in the United States are presumed to be open to the public, with limited exceptions. Further, court documents are generally accessible through the Public Access to Court Electronic Records service.

While the general rule is open access, there are certain situations in which court proceedings or records may be closed or restricted. In trademark proceedings, judges can close portions of trials to protect confidential information or the rights of parties involved.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

Yes, a trademark owner can sue for trademark infringement and passing off in the same legal action, particularly if the defendant's actions could be construed as both.

Trademark infringement occurs when someone uses a trademark that is identical or confusingly similar to another registered trademark without permission, leading to consumer confusion about the source of the goods or services. On the other hand, passing off is a claim that applies even when a trademark is unregistered. It arises when someone deceptively represents its goods or services as those of another, leading to confusion in the marketplace. Thus, the two actions overlap because passing off is a form of infringement.

Trademark infringement claims are often brought concurrently with passing off claims, especially when there is a registered trademark, to strengthen the case against the defendant. As a result, the court can grant remedies for both infringement and passing off, including:

• injunctions;
• damages; and
• orders to destroy infringing goods.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

The process of pursuing a trademark infringement claim involves several key steps:

• Initial investigation and evidence gathering: In this stage, the plaintiff:
• • gathers and thoroughly documents evidence of the infringing activity; and
  • identifies and researches the individual or business responsible for the infringement.
• Pre-litigation phase: Typically, prior to filing a lawsuit, the plaintiff sends a cease-and-desist letter to the infringing party. This letter notifies it of the plaintiff's trademark rights and demands that it stop using the infringing mark. In response, the parties may engage in discussions to explore potential resolutions, such as:
• • agreeing to stop using the mark; or
  • negotiating a coexistence agreement.
• Filing a lawsuit: If a resolution cannot be reached, a trademark infringement lawsuit can be initiated by filing a complaint in court. The complaint:
• • asserts the plaintiff's trademark rights;
  • identifies the defendant;
  • states the relevant facts and grounds for the action;
  • describes the harm suffered; and
  • identifies the requested relief.
• The defendant is formally served a copy of the complaint and a summons.
• Responding to the complaint: The defendant must respond to the complaint by filing:
• • an answer, which admits or denies the allegations; or
  • a motion to dismiss.
• The defendant may also:
• • challenge the validity of the claimed trademark; and
  • assert any available defences.
• Discovery: If the case proceeds, both sides exchange evidence through various discovery methods, such as:
• • requests for documents;
  • interrogatories;
  • depositions; and
  • subpoenas.
• Motions for summary judgment: After discovery, either party may file a motion asking the court to rule in its favour without a full trial.
• Trial: If no settlement is reached, the case proceeds to trial, where both sides present evidence and arguments.

During the trademark infringement proceeding, the party claiming infringement must prove that:

• it owns a valid mark;
• it has priority (senior rights); and
• the defendant's use is likely to cause consumer confusion.

In response, the defendant can challenge whether the trademark itself is legally valid or should remain registered.

The validity of a trademark can also be challenged in the Trademark Trial and Appeal Board (TTAB) through:

• an opposition proceeding (before registration); or
• a cancellation proceeding (after registration).

In a trademark opposition, the validity of the opposed trademark is challenged, often based on pre-existing rights or absolute grounds (eg, genericness). The validity of the trademark is at the heart of the opposition and the opposer must present evidence to demonstrate why the trademark should not be registered.

In a trademark cancellation, 'validity' refers to whether a trademark registration:

• can be maintained and enforced; or
• should be removed from the registry.

A cancellation proceeding challenges the validity of a registered trademark, potentially invalidating it. Several grounds can be used to challenge the validity of a trademark, including:

• non-use;
• abandonment;
• genericness;
• fraud; and
• likelihood of confusion.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

Generally, the timeframe for a trademark infringement proceeding can vary, but trademark litigation typically takes at least a year and often longer.

TTAB proceedings tend to be quicker than trials. The median time to resolve a TTAB opposition case is 18 months. Trademark cancellation proceedings typically take 12 to 24 months to reach a final decision. The duration can vary based on:

• the complexity of the case; and
• the level of cooperation between the parties.

In the TTAB, there is an accelerated case resolution process. If both parties agree, the accelerated case resolution process can resolve disputes in about 12 months.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

No, a court cannot issue extraterritorial injunctions under the Lanham Act. The Supreme Court has recently ruled that the Lanham Act does not have extraterritorial reach and applies only to trademark infringement claims where the alleged infringing use in commerce is domestic. This means that US plaintiffs cannot enforce the Lanham Act against non-US defendants that transact exclusively outside of US borders.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

Each country has its own independent legal system and courts primarily operate within the context of their own jurisdiction. For this reason, the United States has no treaties or agreements that mandate the recognition and enforcement of foreign court judgments.

In common law jurisdictions such as the United States, decisions of higher courts within the same jurisdiction establish binding precedent. Lower courts are generally required to follow the legal principles set forth by these higher courts when deciding similar cases. This principle, known as 'stare decisis', ensures consistency and predictability in the legal system.

Decisions of courts of the same level or from different jurisdictions (eg, courts in other states or federal courts in the United States in relation to state courts) are considered persuasive authority. These decisions are not binding on a court but can be influential, especially:

• in areas where the law is unclear; or
• when dealing with issues of first impression.

A court may choose to rely on the reasoning of such decisions if found persuasive.

Judges, particularly in the Supreme Court, may consider and compare solutions and reasoning from foreign legal systems when faced with novel or complex legal issues. This approach, known as comparative law, can help to gain insights and improve the quality of legal decisions. The influence of the foreign court decisions is generally persuasive but not binding.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

A trademark owner facing infringement can seek various legal remedies, including:

• injunctions to stop the infringement;
• monetary damages; and
• even punitive damages in some cases.

Other remedies include:

• the destruction or forfeiture of infringing goods;
• an accounting of profits made by the infringer; and
• the potential recovery of attorneys' fees.

Injunctive relief is a court order that prevents the infringer from continuing its unauthorised use of the trademark. It is a common and often crucial remedy to stop the infringement and protect the trademark owner's rights.

Monetary damages can be:

• actual damages (compensation for the losses incurred by the trademark owner due to the infringement);
• defendant's profits (disgorgement of the profits defendant made from the infringement);
• statutory damages (predetermined damages established by law); or
• reasonable royalties (compensation based on what a licence for the trademark would have cost).

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

All monetary damages allowed for trademark infringement under the Lanham Act are compensatory and not punitive. This means that, no matter how egregious and malicious the infringement is, the damages to which a plaintiff is entitled must be based on actual harm to plaintiff's business.

If a defendant is held to be a wilful infringer, the court can award enhanced damages of up to three times the actual damages. Further, in exceptional cases, the court may also award attorneys' fees to the trademark owner.

11.3 What factors will the courts consider when deciding on the quantum of damages?

In a trademark case, damages are determined based on the actual harm suffered by the trademark owner and the infringer's profits, with potential for statutory damages in certain cases. The court will also consider the following factors.

• Wilfulness of infringement: Intentional or deliberate infringement can lead to higher damages.
• Severity of infringement: The degree of harm caused by the infringement impacts the damages awarded.
• Length of infringement: The duration of the unauthorised use is considered when assessing damages.
• Remedial actions by infringer: Steps taken by the infringer to mitigate the harm caused by its actions may result in lower damages.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Trademark Trial and Appeal Board (TTAB) decisions can be appealed. Parties dissatisfied with a TTAB decision have two main options:

• appealing to the US Court of Appeals for the Federal Circuit; or
• filing a civil action in a US district court.

Appeal to the Federal Circuit is the more common route. The appeal is based on the existing TTAB record and no new evidence is permitted. The Federal Circuit will review the TTAB's legal conclusions de novo (from scratch), while factual findings are reviewed under a 'substantial evidence' standard.

Appeal to a district court allows for a full de novo review by the district court, meaning that the court can consider all factual and legal determinations anew. Parties can also introduce new evidence and testimony in this process.

Court decisions can also be appealed to a higher court. An appeal is not simply a retrial of the case. Instead, it challenges the lower court's decision, seeking review of:

• errors of law or fact; or
• abuse of discretion by the judge.

The appellate court will review the record of the case, which includes:

• transcripts;
• evidence; and
• documents from the lower court.

It will then determine whether the lower court made a mistake that warrants a change in the decision.

The appellate court decision is final and binding on the lower courts within the same jurisdiction. However, a party can appeal to the US Supreme Court in certain circumstances.

12.2 What is the average time for each level of appeal in your jurisdiction?

Generally, the time it takes for an appeal to be decided can vary significantly based on several factors, including:

• the type of case;
• the court involved;
• the complexity of the case;
• the volume of cases the court is handling; and
• whether oral arguments are scheduled.

A typical state appeals process might span 12 to 18 months from filing of the initial notice to receiving a decision. Federal appeals can generally take longer, often two years or more.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

Litigating in any jurisdiction involves a variety of costs, including:

• filing fees;
• attorneys' fees;
• court fees;
• expert witness fees; and
• costs associated with discovery (eg, depositions and document production).

These costs can vary significantly based on:

• the complexity of the case;
• the length of the litigation; and
• the specific jurisdiction.

The Lanham Act allows the winning party in a trademark case to recover both:

• attorneys' fees (in exceptional cases); and
• other court costs (filing fees, witness fees and court reporting fees, but not attorneys' fees).

The court has a wide range of discretion in determining whether fees are awarded in trademark infringement cases.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Contingency fees and alternative fee arrangements are generally permitted in the United States.

In a trademark case, a contingency fee is an arrangement where the lawyer's payment is based on the successful outcome of the case. The client:

• only pays the lawyer a percentage of the winnings if it wins the case; and
• is not responsible for the lawyer's fees if the case is unsuccessful – only for expenses.

Other alternative fee arrangements are also permitted. These arrangements can include:

• fixed fees;
• capped fees;
• blended fees;
• success-based incentives; or
• other value-based pricing systems for:
• • the entire case; or
  • specific tasks.

13.3 Is third-party litigation funding permitted in your jurisdiction?

Yes, third-party litigation funding is permitted in the United States, but its regulation varies significantly by state. While federal law does not specifically regulate it, many states have passed legislation governing aspects of litigation funding, such as:

• licensing;
• fee limits; and
• transparency requirements.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

Common law trademark rights are acquired through the use of a trademark in commerce, without requiring registration. These rights protect a business's use of a mark in a specific geographic area, preventing others from using confusingly similar marks in that same area. Common law trademark rights are enforced in state and federal courts.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

The Lanham Act, which governs US trademark law, generally applies only to infringing activity occurring within the United States. However, unregistered foreign trademarks can be protected in the United States under:

• common law principles; and
• the well-known marks doctrine.

Unregistered trademarks can be protected under common law, which grants rights based on actual use of the mark in the marketplace. This protection is geographically limited, typically extending only to the areas in which the mark is used.

Unregistered trademarks also benefit from protection under Section 43(a) of the Lanham Act, which prohibits false designations of origin, even if the mark is not registered.

The well-known marks doctrine also provides protection for foreign trademarks that have established a high degree of recognition and reputation in the United States, regardless of whether they are registered. This legal concept recognises that a foreign trademark can be protected in the United States if it is well known in the US market. This helps to prevent the use and registration of these marks by unauthorised parties.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

The trademark litigation landscape is characterised by a growing number of disputes driven by factors such as:

• the rise of counterfeiting; and
• the increasing number of online infringements.

As a result, the trademark litigation landscape is becoming increasingly complex, driven by:

• technological advancements; and
• the evolving digital marketplace.

Businesses must adapt their strategies to address these challenges and ensure that their trademarks are effectively protected.

Based on recent developments, here are some key areas to watch in trademark litigation and potential legislative reforms within the next 12 months.

AI and its impact: The rise of AI, especially generative AI, presents significant challenges and opportunities for trademark law. Businesses and legal experts are closely monitoring how AI tools use and interact with trademarks, particularly in the context of training data and generated outputs.

E-commerce platform liability: The exponential increase in social media influencers and online marketplaces introduces new avenues for unauthorised trademark use and complicates enforcement. Online trademark infringement cases – combating counterfeits and dupes, for instance – have risen due to increased e-commerce activity.

Legislative efforts, such as the proposed SHOP SAFE Act, aim to hold e-commerce platforms accountable for the sale of counterfeit goods. These proposed reforms focus on shifting liability to platforms unless they implement measures such as:

• seller verification; and
• quick removal of counterfeit listings.

Increased focus on non-traditional trademarks: Businesses are increasingly focusing on non-traditional trademarks (also known as unconventional trademarks) to differentiate themselves and connect with consumers in a competitive marketplace. These trademarks go beyond traditional logos, names and slogans by incorporating elements that engage the senses such as:

• scents;
• sounds;
• colours; and
• the overall look and feel of a product or its packaging (trade dress).

To be entitled to trademark protection, businesses needs to demonstrate that the non-traditional trademark is uniquely associated with their brand in the minds of consumers.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Parties facing trademark litigation should:

• immediately seek advice from experienced trademark counsel; and
• preserve all relevant documents.

Our recommendations are as follows:

• Seek early legal advice: Engage a trademark attorney as soon as possible to:
• • understand the potential legal challenges; and
  • develop a sound strategy.
• Preserve documents: Be meticulous about preserving all documents, communications and evidence related to the trademark and the alleged infringement.
• Consider alternative dispute resolution: Explore mediation or arbitration as alternative ways to resolve the dispute, which can be faster and less costly than full-blown litigation.

Potential pitfalls include the following:

• Underestimating litigation costs and time: Trademark litigation can be lengthy and expensive, so it is crucial to understand the potential financial impact.
• Insufficient attention to evidence preservation: Failure to preserve evidence, such as documents and communications, can significantly harm your case.
• Failure to conduct proper surveys: A key element in trademark infringement cases, and a common stumbling block, is conducting a proper survey to establish whether consumers are likely to be confused between the marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.