Every year, millions of dollars are spent towards settling trademark infringement cases. Businesses and corporations pay copious sums of money to law firms to fight trademark litigation. A trademark is a valuable asset to many businesses. The business name, tagline and logo can be trademarked by companies to ensure their distinctiveness in the market. But, if another company claims to have trademarked either of the above-mentioned aspects of your business and accuses you of infringement, then you can be privy to a serious trademark battle. The focus of this article is to discuss the possible defenses you can have against a plaintiff. These are a few ways in which your intellectual property lawyer can defend your case in court:
1) By proving the use of trademark was not in bad faith
The case for infringement depends on the reason why the plaintiff has sued you. If it is for mentioning their brand name on your website or on any marketing material, then you may be able to defend yourself by proving that you are in no way affecting the sales or the market share of the plaintiff’s company.
A good example of this is the trademark battle between Academy awards and Godaddy.com which was regarding cybersquatting. Godaddy.com is a popular internet domain registrar and web hosting company. They had sold domain names like 2011oscars.com and betacademyawards.com. These domain names were similar to the authentic website of Academy awards. Over a period of five years, the judge did not find any evidence proving that godaddy.com had sold those domain names in bad faith and Academy Awards lost the case.
2) By proving the plaintiff faces no economic damage
Another potential defense is to prove that the plaintiff is in no way going to face any economic damage due to the infringement. If the plaintiff has filed a lawsuit against your company for trademark infringement, then they have to prove that they have borne substantial losses because of the infringement. The plaintiff also needs to show the difference in earnings and the subsequent losses borne due to the infringement. If there is no substantial proof of this, then you may be able to use this to defend your case and have the judgment decided in your favour. Trademark lawyers are well-versed with key strategies to deal with IP infringement cases. You should consider consulting a trademark lawyer to select the appropriate approach that needs to be taken for your case.
3) By proving the plaintiff has an invalid trademark
If the plaintiff has sued you for the use of a trademark which is clearly descriptive of a place, then, you may be able to use that as a potential defense to claim that the opposing party’s trademark is void. The Dr. Patrick Lum versus Dr. Coby Cragg is a popular example wherein the defender won the case against the plaintiff on the ground of invalidity of the trademark.
If allegations of trademark infringement have been brought against you and you are looking for a assistance, reach out to our team at Prowse Chowne LLP.