Doctrine of Laches is applicable to Trademark Infringement

Last week, the U.S. Court of Appeal for the Ninth Circuit ruled that the equitable defence of laches—unreasonable delay that prejudices an opponent—still applies in trademark cases, even though the Supreme Court has eliminated it in the last few years with respect to copyright and patent cases.

Lush by Cosmetic Warriors, Picture Credit- Lush

Facts- Pinkette, a clothing company founded by two siblings and a cousin in 2003, sells LUSH women’s clothing through Nordstrom, Bloomingdale’s and TJ Maxx. In 2010, they registered the LUSH mark without opposition from Cosmetic Warriors Limited(CWL)- The makers of LUSH brand cosmetics, perfumes and bath oils, whose use of LUSH dates back to 1996. CWL claimed that it wasn’t aware of Pinkette’s use until 2014, when its own attempt to register LUSH clothing was rejected over the Pinkette registration. Upon becoming aware of Pinkette’s use in 2014, CWL sued for trademark infringement.

The Lush Brand by Pinkette- Picture Credit- www.lushclothing.com

A jury found that Pinkette was indeed infringing but the court held that CWL waited too long to bring its case and ruled in favour of Pinkette on the grounds of laches. “The principle at work in those cases—a concern over laches overriding a statute of limitations—does not apply here,” Judge Jay Bybee wrote for a unanimous panel, “where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation.”

Definition of Laches - An equitable defence designed to protect defendants from the prejudice that occurs when plaintiffs unreasonably delay the commencement of a lawsuit. With respect to Intellectual Property, it is relevant in the following ways;

·         It prevents intellectual property owners aware of infringing activities from sitting back idly while others invest time and resources into a potentially infringing IP.

·       It also strives to ensure that the evidence defendants need to contest claims of infringement — whether documents or a recollection from a key witness — are not lost due to the passage of time.