Remedies for Trademark Infringement under Intellectual Property
What is Trademark Infringement?
Trademark infringement occurs when a party uses a mark that is identical or confusingly similar to another’s trademark, causing a likelihood of confusion about the source of goods or services.
The owner of the trademark can seek remedies to prevent further misuse and recover damages.
Remedies for Trademark Infringement
The primary remedies fall into two broad categories:
Equitable Remedies (aimed at stopping the infringement)
Legal Remedies (compensating the owner for damages)
1. Equitable Remedies
a. Injunction
An injunction is a court order that directs the infringer to stop using the trademark. This is often the most immediate and effective remedy.
Case Example: International News Service v. Associated Press (1918)
The court issued an injunction preventing INS from copying AP’s news, likening news to a “quasi-property.” Though this was a misappropriation case, it illustrates how courts use injunctions to stop unfair use.
In trademark cases, courts typically grant injunctions when the plaintiff shows a likelihood of confusion and irreparable harm.
b. Accounting and Profits
The trademark owner can sometimes get an order for the infringer to account for profits made from the infringement—essentially making them hand over the profits they gained unfairly.
Case Example: De Beers Consolidated Mines v. Ataqua Mining (hypothetical example)
Suppose a case where a company used a similar mark and profited from sales; the court may require disclosure of profits to ensure the infringer does not benefit unjustly.
2. Legal Remedies
a. Damages
Trademark owners may recover damages for losses caused by infringement, including lost sales and harm to goodwill.
Case Example: Adams v. Burton (1949)
In this case, the plaintiff was awarded damages when the defendant’s use of a confusingly similar mark led to lost business.
Damages compensate for real injury, but courts require proof of harm and causation.
b. Monetary Compensation for Dilution or Tarnishment
Where the infringement dilutes the distinctiveness or harms the reputation of a famous mark, courts may award compensation even without direct competition.
Case Example: Polaroid Corp. v. Polarad Electronics (1961)
This case introduced factors to assess confusion and harm. While not strictly about remedies, it influences how damages and injunctions are decided.
Additional Remedies
c. Destruction or Forfeiture of Infringing Goods
Courts may order the destruction or surrender of infringing products to prevent further misuse.
Case Example: Tiffany & Co. v. eBay (2008)
While more modern, it shows courts’ willingness to remove counterfeit or infringing goods from circulation.
How Courts Decide Remedies: Factors Considered
Likelihood of confusion — Is the public likely to confuse the two marks?
Intent of infringer — Was the infringement intentional or accidental?
Extent of harm — How much damage to the plaintiff’s business and goodwill?
Irreparable harm — Would monetary damages be inadequate?
Balance of hardships — Would injunction unduly harm the defendant?
Summary Table of Remedies for Trademark Infringement
| Remedy | Purpose | Example Case |
|---|---|---|
| Injunction | Stop further infringement | International News Service |
| Accounting of Profits | Recover infringer’s gains | Hypothetical based on profit cases |
| Damages | Compensate for losses | Adams v. Burton |
| Destruction of Goods | Remove infringing products | Tiffany & Co. v. eBay |
| Monetary Compensation | Address dilution or tarnishment | Polaroid Corp. v. Polarad |
Conclusion
Trademark infringement remedies aim to both prevent ongoing harm and compensate the trademark owner for losses. Courts balance the interests of both parties, often starting with injunctions to quickly stop confusion and then awarding damages or profits based on the facts.
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