Vans Shoes is seeking a preliminary injunction to stop Wal-Mart from selling allegedly counterfeit shoes. Wal-Mart has challenged the injunction arguing that Vans shoes took too long to assert its trademark rights. While the outcome of Wal-Mart's challenge has not been decided, this argument is a good reminder that vigilance and prompt action are required when seeking emergency relief such as a preliminary injunction or temporary restraining order.
Emergency Relief:
When faced with counterfeit goods or trademark infringement that is harming your business or eroding your market share, quick intervention from a court to stop the harm is often the most valuable action. Indeed, since emergency relief requires proof that the plaintiff is likely to succeed on the merits, a ruling granting such relief often results in the defendant stopping all infringing conduct and/or prompt settlement. Courts can grant emergency relief, such as a preliminary injunction or temporary restraining order, These types of relief are requested at the outset of litigation often before parties have had a chance to answer and certainly before the discovery process begins.
Given this early stage and the impact that the relief will have on the accused infringer, they require heightened justification. In general, there are four factors that are weighed before a preliminary injunction or TRO can be granted:
That plaintiff will be irreparably harmed if relief is not granted
That plaintiff is likely to succeed on the merits of its claim
That the balance of equities supports the relief
The public interest supports an injunction
Wal-Mart's argument that Vans failed to promptly take action since the shoes had been sold by Wal-Mart since 2018 goes primarily to whether Vans will be irreparably harmed. In essence, Wal-Mart challenges whether Vans is truly being irreparably harmed since the alleged infringement had been on ongoing without objection for over three years before Vans brought its suit. The Trademark Modernization act created a presumption of irreparable harm, but that presumption is rebuttable. A plaintiff's significant delay in bringing suit can rebut the presumption.
A period of delay as little as two months has been found to rebut a finding of irreparable harm. Since each Federal district has a slightly different analysis when it comes to the effect of delay, careful consideration of decisions in the district where the case will be brought may provide useful guidance as to how quickly one should act and the circumstances where delay could defeat a request for emergency relief.
Vans has countered Walmart's argument that it delayed by pointing out that, although the shoes may have been sold through Walmart's site for three years, it only discovered the infringement within the last six months. It also indicated that the short delay from its discovery of the infringement was due to performing a reasonable investigation of the infringement and determining its litigation strategy. These arguments are relevant to whether the delay was significant or gave rise to the equitable defense of laches (delay coupled with defendant being prejudiced by the delay). In many instances, a court will not count a period of infringement towards plaintiff's delay if the infringement had not been discovered by plaintiff.
Consequently, the determination of whether the delay is significant and whether it rebuts the presumption of irreparable harm are highly factual causing each instance to require its own review. It is clear, however, that once a trademark owner has discovered an infringement, that the clock is ticking. Prompt review of the alleged infringement should begin to determine if the infringement merits a cease and desist letter and ultimately whether it will be necessary to seek relief in court.
