• Trademark Infringement

How to win a trademark infringement case?


Trademark infringement cases arise when an unauthorized individual or business uses another company’s trademark in ways that can confuse and mislead consumers. Any business, whether they do it intentionally or accidentally, can be sued for using logos, phrases, or words that share similarities with other company’s registered marks.

Trademark cases cost a lot of money for both the plaintiff and the alleged infringer. It can also cause damage to reputation no matter if it’s a large business or a small one. That is why presenting strong arguments in court can be crucial. Here, then, are some things you need to take note of to win a trademark infringement case. 


If you are the plaintiff

  • Knowing your Intellectual Property rights

As the plaintiff, you should double check your registration before anything else. This is because you’ll have to show proof of when the mark was first used (if it was used in the market before the alleged infringer did) and that the trademark has not lapsed. If you have assigned rights to third-party firms, make sure to take note of this also. As long as your trademark registration is still valid, you will almost always have the advantage.

  • Will it be worth the cost and time?

Another thing you should think about is if suing really is worth your time and money. If you observe that the case isn’t too big yet, you can file for a cease-and-desist order since it is less costly and is often effective. A cease-and-desist document basically tells the infringing party to cease the alleged illegal activity and not to start again (desist). If the infringement has caused serious damage to your business and reputation, then it should be worth your time and resources to push through with the lawsuit.

  • Get an experienced trademark lawyer

It should already be obvious that you should get a good lawyer when it comes to infringement cases. Experienced trademark lawyers will guide you throughout the process even before you push through with a lawsuit. Attorney fees are also another thing to consider. There are certain situations where the defendant won’t need to pay the attorney fees of a plaintiff if he/she wins the case. The attorney might also help you settle if you want the illegal use of your trademark to be ceased or just ask for a certain amount for compensation of damages.


If you are the defendant

Though the plaintiff may have some advantages, there are also many strong arguments that a defendant can offer. Trademark infringement defense is what the defendant brings to show that he/she did not use another’s trademark illegally. Here are some defenses against claims of infringement:

  • Fair Use

This is one of the most common defenses against infringement claims. It is also common because it involves a lot of factors. One of those is classic fair use is basically when someone’s (the plaintiff) trademark is used to describe the other party’s (defendant) products or services. For example, if the plaintiff has a trademark like “STRAWBERIFILLED” and they sue another company that used the term “strawberry-filled” in their products, that would be ruled out in court and the defense will win. This is simply because the plaintiff cannot prevent others from using such a descriptive term. 

Another example of fair use would be nominative fair use, which basically allows for the use of another trademark as long as there is no confusion for the consumers. For example, a small watch store of a different brand that retails Casio watches can say they can fix and sell Casio timepieces. BUT they must make it clear that they do not officially bear the Casio brand.

  • Doctrine of Laches

This is used as a defense by saying that there has been an unreasonable delay in the plaintiff’s claim. This simply means that the plaintiff did not file the claim quickly enough and has already run out of time.