What remedies are available for trademark infringement?

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What remedies are available for trademark infringement?

The remedies available to a prevailing plaintiff can include monetary damages, injunction against future infringement, erasure of the infringing sign, seizure and destruction of the infringing goods, and publication of the judgment at the defendant’s expense. The court may also award reasonable attorney’s fees. Criminal remedies are typically pursued separately.

Injunctive relief is available to anyone whose trademark rights have been infringed or are being threatened with infringement. Thus, cease-and-desist orders are available either preliminarily based on interlocutory judgment or permanently based on the court’s final judgment if there is a risk of repeated infringement by the defendant.

If the claimant acts sufficiently quickly after becoming aware of the infringement it may apply for interim protective measures to enjoin the infringer from using the plaintiff’s trademark for the duration of the proceedings. Interim protective measures include restraining orders (ban of further sale), attachment, custody (e.g. seizure of goods from the infringer’s warehouse), and preservation of evidence. Injunctions are granted ex parte, i.e. without hearing the defendant. The court may order preliminary measures if the plaintiff shows that the enforcement of the potential judgment will otherwise be rendered impossible or complicated. Such relief lasts until a certain moment in time, usually until the decision on the merits of the case becomes final.

The court may also order the infringer to provide all the banking, financial and commercial documents and any other information regarding the trademark infringing activities and persons (such as names of producers, importers, distributors, intermediaries, shop-owners, invoice details, volume of goods, orders, pricelists etc).

A successful plaintiff is entitled to claim destruction of the unlawfully marked products, unless this request is disproportionate (e.g. erasure of infringing marks from the goods is an effective remedy). This claim shall also apply to materials and devices that have been used mainly for the unlawful marking of the products.

The publication of the decision can also be requested, with the costs charged to the defendant.

Additionally, the plaintiff may claim compensatory (not punitive) damages and delivery of profits. The amount of monetary relief depends on the plaintiff’s ability to demonstrate his or her loss or damage or the defendant’s unlawful profit. The amount awarded may be based on publicly available annual reports, lost license fees, reduction in sales, dilution of the trademark, disorganization of the distribution network, etc. In some cases an expert can be designated in order to evaluate the prejudice suffered by the plaintiff.

Furthermore, customs may be a good partner in stopping counterfeit goods. If instructed in advance, customs may suspend goods so that the trademark owner can make an attachment after their warning.

If a criminal act of trademark infringement has been committed the sanctions imposed may be confinement of up to three months or a fine of up to USD 2,500.

Third parties infringing trademarks even if they are acting as intermediaries such as distributors, importers, holders or exporters of trademark infringing goods, may also face criminal sanctions.

Search and seizure orders are effective remedies under criminal law allowing Armenian enforcement authorities to intervene very quickly.

Technically, aggrieved parties can also obtain an award for damages in criminal proceedings. However, it is more common for courts to single out civil claims to consider them in a separate civil procedure.

2014-01-11T10:32:10+04:00 January 11th, 2014|