What happen if there is infringement of a trade mark? Part II - Civil Process

-- Civil litigation 

If the mark is not identical but merely similar and the warning letter does not work, then it may be necessary to engage an attorney to commence civil proceeding claiming for injunction order to stop the infringement as well as damages. Injunction order or restraining order is a court order for the infringer to stop the infringement . Failure to comply means contempt of court rendering the defaulter liable to committal process resulting in punishment of imprisonment and or fine.

-- Other court procedures in civil action.  Some common issues to be aware of:

Interim injunction - In some cases, there is urgency to stop an infringement immediately because you cannot wait for the case to be ready for trial. Between the stage when proceedings begin to the time when you have the trial followed by final decision, it might take up to six months or more. If you can show that damages award is not likely to adequately compensate you eg loss of customers cannot be quantified or your business is still in the embryonic stage which would be irreparably damaged by the infringement.


The court in considering what is best having regard to the status quo might grant an interim injunction pending the final order. Because you will need to give an undertaking that you would pay damages in the event that you eventually lose the case, interim injunction should be applied for only you you believe that there is  a strong likelihood of success.

Litigation cost - One important question in any litigation is legal costs that can easily run out of control. Quite apart from paying your attorney legal costs, you will also have to pay for the otherside legal costs in the event that you lose. Also watch out for Offer to Settle tactics from the otherside. Basically, the otherside offer to settle with you on certain terms which might be lesser than what you are claiming, they might offer to settle with you in those terms.


In the event that the other side turn out to be right, that you should have settled than to push the case and the court granted you something which is equal or lesser than the Offer to Settle, then you will be responsible for the legal costs running from the time that the offer to settle was given. As litigation costs can easily run up to USD 100,000 and above, legal costs should be one of the main consideration in managing litigation throughout the course of the case.


You and your attorney should address the issue of costs as frequently as possible.   In the heat of litigation, parties can get carried away with what they feel is justifiable protection of their strict legal rights and allowing pride to get in the way, neglecting the costs impact and getting a nasty surprise on the final legal bill.

Identifying defendants - Whenever the facts support it, the defendant should be an individual in addition to naming a corporate entity that might just be a two dollar company. Individuals that might be named are directors who is the real controlling mind behind the infringement which he or she might use his limited liability corporate shell to front; evidence could be letters or document signed by the director connected to the infringement.