As everyone shops for toys this holiday season, many have encountered counterfeits that are strikingly similar at first glance, but with their low price point compared to the actual licensed product, these counterfeits have lured away or even deceived consumers.
In response, toy developers and manufacturers who obtained federal trademark and copyright registrations commenced actions for trademark and copyright infringement, trademark counterfeiting, false designation of origin, and unfair competition, and sought a temporary restraining order and preliminary injunction to immediately stop the counterfeit sales.
The standard to which a court will grant a temporary restraining order and preliminary injunction requires a showing of irreparable harm. This showing, however, may have been made stricter in trademark cases by a recent decision by a District Court in California by that precluded a presumption of irreparable even upon a plaintiff’s demonstration of a likelihood of success on the merits.
The U.S. Supreme Court in Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) and eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) established that on a copyright or patent infringement claim, the presumption of irreparable harm is impermissible when a plaintiff demonstrates a likelihood of success on the merits. In expanding on this standard, the District Court for the Northern District of California in Rovio Entm’t Ltd. v. Royal Plush Toys, Inc., 2012 WL 5425584 (N.D. Cal. Nov. 6, 2012) recently held that there was no principled reason why this standard should not be applied in the trademark context; thus, the Rovio Court held that a plaintiff is not granted the presumption of irreparable harm upon a showing of a likelihood of success on the merits in trademark infringement claims.
Accordingly, with the new district court decision, the standard for TROs and preliminary injunctions on copyright or patent infringement claims will likely be applied to trademark infringement claims — there is no longer a presumption of irreparable harm even when a likelihood of success is shown. Requests for TROs and preliminary injunctions should therefore be supported by substantial evidence.