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Trademark owners in common law jurisdictions should be familiar with the law on groundless threats of infringement, says Faisal Daudpota of Daudpota International (UAE).
Common law statutes often provide for preemptive legal proceedings against groundless threats of trademark infringement. Such laws usually include nuances like that of Section 52 of Pakistan’s Trade Marks Ordinance, 2001 (TMO’01), which says that where a person makes a “threat” to bring a legal action against another person on the ground that the other person has (a) infringed a registered trademark; or (b) infringed a trademark claimed as registered; the person “threatened” may bring preemptive legal proceedings for relief against the person making the threat.
However, if the “threat” has not been defined, TMO’01 clarifies that notification that a trademark is registered or that an application for registration has been made shall not constitute a “threat.” Further, it says that such preemptive legal proceedings can be initiated to seek relief, including (a) a declaration that the threats are unjustifiable; (b) an injunction against the continuance of the threats; or (c) damages in respect of any loss sustained by the threats.
Further, the law states that such preemptive legal proceedings by the person “threatened” will fail if the person making the threat shows that the relevant acts (in respect of which legal action was threatened) are (a) an infringement of the registered trademark concerned; or (b) would be an infringement of the given registered trademark.
Notwithstanding the foregoing defenses for the person making the threat, such preemptive legal proceedings by the person “threatened” may still be maintainable if he shows that the registration of the given trademark is (a) invalid; or (b) liable to be revoked.
Tricky Causes of Action
Common law courts understand perfectly that causes of action for preemptive legal proceedings are tricky. Leading courts from various countries have always cautioned about the awkwardness of such cases by making the point that the right to institute a suit for infringement of a registered trademark is an important one.
"Preemptive legal proceedings must be viewed cautiously, because through such proceedings the court is usually called on to pass an order restraining the defendant from instituting a suit."
Also, it is settled law that unless there is an express statutory bar, the right of a person to institute a suit should not normally be interfered with. Thus, essentially the preemptive legal proceedings must be viewed cautiously, because through such proceedings the court is usually called on to pass an order restraining the defendant from instituting a suit.
When a Cause of Action Arises and Expires
There is an inherent limitation to such causes of action. That is, preemptive legal proceedings seeking an injunction against groundless threats for trademark infringement can arise only from the date on which the “threat” for alleged infringement has been made, and that such a cause of action expires on the date on which legal proceedings have been initiated by the person that originally issued the “threat” of infringement action.
Claimant’s Burden of Proof
In typical circumstances of preemptive legal proceedings seeking injunction against groundless threats for trademark infringement, the claimant must prove that:
· The claimant has received threats of an imminent legal action by the defendant for alleged trademark infringement;
· The defendant does not have any valid trademark right; and
· The claimant has not committed any actions of trademark infringement (and will be able to successfully defend himself against a trademark infringement claim).
Defendant’s Burden of Proof
Again, in typical circumstances of preemptive legal proceedings seeking injunction against groundless threats for trademark infringement, the defendant must prove that:
· The defendant has the statutory right to claim infringement and issue a threat of legal action against the claimant;
· The defendant has a valid trademark right;
· The claimant cannot stop the defendant from exercising his legal right;
· The claimant has committed actions of trademark infringement (and will lose the case of trademark infringement); and
· The defendant has already initiated the legal action for infringement of the given trademark.
Faisal Daudpota is Senior Partner at Daudpota International (UAE). He can be contacted at: firstname.lastname@example.org
Faisal Daudpota, Daudpota International, Pakistan’s Trade Marks Ordinance, trademark infringement, preeemptive legal proceedings, INTA, INTA18