brandon_bourdages
24 April 2020TrademarksRory O'Neill

Romag v Fossil: a ‘pro-brand’ ruling, say lawyers

Yesterday’s US Supreme Court ruling in  Romag v Fossil is the latest effort to erase categorical rules on remedies for IP infringement, lawyers have told WIPR.

The US’ top court ruled yesterday, April 23 that  willfulness is not a precondition for an award of profits against a trademark infringer.

At the heart of the case was a  debate about flexibility: should courts require a finding of wilful infringement for an award of profits, given the severity of that remedy, or should they be able to apply it based on the merits of a case?

“The current Supreme Court consistently opposes rigid or categorical rules regarding the availability of relief in IP cases, even where lower courts have long hewed to such rules,” said Jonah Knobler, partner at  Patterson Belknap Webb & Tyler.

The case also resolved a split between the Circuits—the appellate courts covering different geographical areas in the US.

When reviewing Romag’s trademark infringement suit against Fossil, the US Court of Appeals for the Federal Circuit applied the precedent of the Second Circuit, which covers Connecticut.

“Prior to the Romag decision, two of the most important circuits for Lanham Act cases (the Second and Ninth Circuits), held that trademark owners were not entitled to disgorgement of profits unless they proved willful infringement,” Kevin Fee, partner at  Morgan Lewis explained.

For Romag, which successfully sued Fossil for trademark infringement, the case was an opportunity to bury this precedent.

Defendant Fossil argued that the ‘principle of equity’ in US trademark law meant the award of profits should be reserved for wilful infringement.

Although this did not persuade the Supreme Court, Danielle Johnson, associate at  Goldberg Kohn, said that the decision is still unlikely to cause harm to “innocent infringers”.

“As the Court noted, a defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate—the opinion merely makes clear that willfulness is not an absolute precondition,” she said.

“In the Second Circuit and elsewhere, however, courts will likely continue to require willfulness as a matter of equity in most cases,” she added.

Even if its impact is not felt immediately, the ruling will be seen as a win for plaintiffs in trademark infringement suits.

“I think a useful takeaway is that Romag is pro-brand owner and pro-consumer,” said Joseph Lawlor, associate at  Haynes and Boone, adding: “It will open the door for more brand owners to enforce their trademark rights and may discourage infringement.”

But, Lawlor points out, that doesn’t necessarily mean it will lead to an increase in litigation: “While plaintiffs may feel emboldened to enforce their trademark rights, there is also reason to believe that pre-litigation settlements will be more likely because defendants will face more risk in proceeding to litigation.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Today's top stories

From here to eternity—a copyright conundrum

BeIN urges Premier League to block Saudi's Newcastle takeover

Bioplastics innovation lags, despite public sentiment: Clarivate

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
15 January 2020   US Supreme Court justices presiding over a closely-watched case are so far struggling with the notion of “wilfulness” as a requirement for awarding profits in trademark infringement cases.
Trademarks
10 January 2020   The US Supreme Court is set to hear arguments next week in a key dispute that is likely to have ramifications for what remedies courts can apply for trademark infringement.