One recent study published in Inside Counsel revealed that 80 percent of executives worry that infringement is on the rise, but only a few are actively monitoring their portfolio of trademarks. It’s crucial to understand as quickly as possible when your marks are subject to infringement, both to protect consumer trust and avoid unsatisfactory legal judgments.
In one recent case, a Taiwanese brand waited six years to file litigation from when they first initiated invalidation actions. This six-year gap made their request for compensation invalid.
In a world where prolonged, unnoticed infringement may invalidate your claims of harm, actively monitoring all your marks becomes even more critical.
Trademark Infringement and Irreparable Harm
News stories abound of household name brands who are entangled in litigation around infringement. Starbucks, Netflix, and GoDaddy, are just three of many examples of organizations who have filed infringement litigation, or faced litigation against their own organization.
Starbucks v. The End
The limited-edition unicorn Frappuccino, sold by Starbucks earlier this year, took social media by storm, both for its bright colors and surprising sugar content. However, according to The End Brooklyn, a coffee shop in Brooklyn, the drink was infringing upon a beverage they introduced in December last year.
The End’s official application to trademark “Unicorn Latte” was filed in late January. While it remains to be seen who will prevail in this particular $10 million battle, The End alleges that Starbucks has caused their customers to believe the unicorn latte is a Starbucks knock-off, which could cause irreparable harm to their mark.
What Defines Irreparable Harm? The 4 Factors
In trademark cases, the burden of proof falls on the plaintiff to demonstrate that likelihood of confusion could cause irreparable harm to their brand.
Irreparable harm has historically been defined as the ability to show the likelihood of irreparable harm without an injunction. However, after the Supreme Court rejected a presumption of irreparable harm in Winter v. Natural Resources Defense Council, three additional factors are taken into consideration.
Following this precedential decision, the following four-part test is likely the most appropriate way for US brands to determine whether they have suffered infringement:
1. Likelihood of Success
The plaintiff is required to prove they are likely to succeed on the merits, which can be probable success.
2. Irreparable Harm
The plaintiff must demonstrate that they are likely to suffer irreparable harm without an injunction.
3. Balance of Equities
Courts must balance the damage to the defendant with an injunction with the damage to the plaintiff without an injunction, and find that the balance tips towards the plaintiff.
4. Public Interest
If the trademark infringement or possible injunctions have an effect on the public, this factor must be considered in the whether an injunction is awarded.
Increasing Infringement and Protecting Your Brand
As a brand, this climate of growing infringement is a sign that it’s time to lock down your portfolio and keep tabs on all of your trademarks.
The recent case in Singapore reveals that waiting to take action may not swing the court’s decision in your favor, even if you’ve already communicated with the infringing brand. Your organization’s best bet to avoid irreparable harm to your trademarks is to actively monitor all of them, and be ready and equipped to act the moment possible infringement is detected.
Manually monitoring your brands with search alerts isn’t possible or pragmatic, especially if your portfolio contains dozens of marks. With new technology, like NameWatch™, organizations can actively monitor all their marks in a fraction of the time they used to monitor only their crown jewel marks. Being able to quickly view new activity in trademark applications with a threat of infringement empowers brands to be proactive in protecting their brands, products, and trademarks.
To learn more about NameWatch™, a tool that empowers the busiest professionals to maintain constant oversight, protect large portfolios and receive real-time alerts about emerging risks, click here.