What is a Permanent injunction of a trademark? – Trademark Registration

1. What is a Permanent injunction for a trademark? – Trademark Registration http://www.trademarkconsultants.in/

2. Permanent injunction is granted or denied at the discretion of the court after investigation of all the facts at the trial. • This discretion “when applied to a court of law means discretion guided by law. • It must be governed by rule and not by humour. • It must not be arbitrary, vagile and fanciful, but legal and regular”. * http://www.trademarkconsultants.in/

3. But a permanent injunction at the final hearing is a matter of course and of right when the plaintiff’s right and title and an infringement or a passing off is clearly established and there are no countervening equities. • In formulating a final injunction in trademark and unfair competition cases the object of the court is to eliminate confession and unfair dealing. http://www.trademarkconsultants.in/

4. The injunction should be no broader than is necessary to prevent deception and protect complainant’s rights and on the other hand, should be broad enough to afford him all the protection to which he is entitled. • A court will not, by way of an injunction, undertake to revise a contract with respect to the use of a trade name nor will it grant such relief to prevent the violation of an agreement which is too indefinite. This principle is of very real importance in cases of this sort for oftentimes the decrees finally granted, leave the defendant in position to continue to harass the plaintiff unfairly or to continue a practical use of the methods condemned in the court’s opinion. http://www.trademarkconsultants.in/

5. It happens not infrequently that the relief provided for in the opinion is pared down in formulating the decree to such an extent as to deprive plaintiff of much of the relief to which the court, in its opinion, had held him entitled. • Many unfair competition and trademark cases, the trial of which has cost litigants substantial sums, have ended in weak, impractical, compromise decrees of little practical value as a protection of either the plaintiff or the public. http://www.trademarkconsultants.in/

6. Suit was filed for permanent injunction against defendant’s trademark. • It is alleged that the marks of the plaintiff and the defendant are similar and would cause confusion and deception in the minds of the public.  • The defendant contended that the application suffered from delay and laches. • It was held that the product of the defendant is under construction and as such there was no delay in filing the application. • Plaintiff filed a suit for permanent injunction against defendant. http://www.trademarkconsultants.in/

7. Commercially impracticable – No ground to refuse: • The fact that a decree proves commercially impracticable from the defendant’s point of view does not mean that plaintiff will be deprived of protection. • In a case involving the use of a personal name on confections the second circuit court directed that a special explanatory phrase be used by the defendant in juxtaposition to the personal name. http://www.trademarkconsultants.in/

8. On a re-hearing, the defendant asserted that it was a physical impossibility to print this phrase in the manner provided in the decree on the wrappers around the individual pieces of the confection. • The court refused to relieve the defendant of this obligation, saying that if, what the defendant, asserted was true and the defendant could not use the name as directed, then it must cease to use the name altogether. http://www.trademarkconsultants.in/

9. Unfair use of trademark on the trademark owner’s goods: Where the infringement lies, not in the simulation of another’s trademark, but in its improper use, by others than the owner, the remedy is not to enjoin all use of it, but to regulate such use so that it will be honest and truthful. Only in cases of extreme and continuing fraud an injunction against the use of the trademark will be issued. http://www.trademarkconsultants.in/

10. Corporate names: In respect of corporate names the same rule applies to the name of firms or individuals, and an injunction lies to restrain the simulation and use by one corporation of the name of a prior corporation which tends to create confusion and enables the later corporation to obtain, by reason of the similarity of names, the business of the prior one. No distinction between the natural persons and the corporation in the principle which is to prevent fraud. An individual who has been doing business under his own name is not deprived of the right to use his own name because he brings a partner into his business, or incorporates http://www.trademarkconsultants.in/

11. Bankruptcy: The fact that defendant’s assets are in-charge of a trustee in bankruptcy is no ground for refusing an injunction in a suit for infringement of a trademark and unfair competition, consisting of the use of plaintiff’s trademark as a part of defendant’s corporate name, since a sale of the property would include the assets, goodwill and corporate name. So an injunction restraining further use of a name as part of the corporate name of a corporation will not be denied on the ground of hardship, where the hardship, if any, arose from the acts of the corporation after expiration of the contracts authorizing the use of such name. http://www.trademarkconsultants.in/

12. Discontinuance prior to suit: • Discontinuance of the use of the mark or name constituting infringement or unfair competition, before commencement of this suit, is not a bar, where defendant contests the suit and still claims the right to use such mark or name, • and there are no grounds to believe that the discontinuance was in good faith and without an intention to resume the wrongful use. • An injunction may be denied where the infringement or unfair competition was discontinued in good faith, and there is no reason to believe it will be resumed. http://www.trademarkconsultants.in/

13. Defendant guilty of deliberate fraud: A defendant guilty of deliberate and intentional fraud will be dealt with more strictly than one who has acted with innocence and good faith. Drastic relief will be granted in such cases to prevent the continuing effect of defendant’s acts. A defendant whose business enterprise is based on an express and deliberate fraud will not find a court of equity strenuous to preserve all the rights are might have had if his conducts and motive had been honest. http://www.trademarkconsultants.in/

14. Plaintiff guilty of fraudulent trade: Where the plaintiff’s trade is fraudulent relief will be denied. It will also be denied where the defendant has been misled by the plaintiff’s conduct. On the trial of an action, to restrain the defendants from infringing the plaintiff’s trademark, and from passing off the wine in question as being the plaintiff’s wine, it was held, that the wine was not the plaintiff’s wine, and that the plaintiff were not estopped by their conduct from restraining the sale of the wine as their wine. http://www.trademarkconsultants.in/

15. An injunction and an account of profits were granted. The defendants appealed. Held, that the defendants were justified in coming to the conclusion that the wine was Burgoyne’s wine, and that they were so justified by reason of the conduct of the plaintiffs in the matter, and that the plaintiffs were not entitled to any relief. The appeal was allowed with costs. http://www.trademarkconsultants.in/