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Is willfulness required to show trademark infringement?

| Sep 2, 2020 | Uncategorized

The Supreme Court of the United States (SCOTUS) recently agreed to hear a case that questions whether or not a trademark holder needs to establish the individual or business who violated the trademark did so willfully in order to win an infringement case. Courts throughout the country have heard cases that ask the same issue, but do not apply the same rules. Some circuits require the trademark holder establish the violation was willful, others do not.

This lack of consistency is likely one reason the highest court in the country chose to hear this case.

What was the case?

The case involves the popular clothing and accessory company Fossil. Fossil signed an agreement with Romag Fasteners to use their magnetic fasteners on their purses. While in production in China, Romag claims Fossil did not protect their trademark. As a result, the Fossil bags instead used counterfeit magnetic clasps, not Romag’s clasps.

The lower courts held in favor of Fossil, finding Romag failed to show Fossil intentionally violated its trademark protections.

What did SCOTUS decide?

Ultimately, SCOTUS disagreed with the lower courts in this case and ruled in favor of Romag. The justices stated the aggrieved party did not need to establish willfulness to get their profits in an infringement case. As the highest court, this holding is applicable throughout the country. However, it is important to note that although willfulness is not required to resolve this issue, the justices do acknowledge that courts may still take the mens rea, or infringing party’s mental state, into consideration when deciding these cases.