Tuesday, December 27 2022   \  Published by Miller Nash .

Supreme Court May Review Trademark Territoriality

Supreme Court May Review Trademark Territoriality

The United States Supreme Court has a new opportunity to look at whether a U.S. trademark owner can recover damages for infringing uses of the owner’s mark occurring outside the United States.

In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy duty construction equipment, sued its former distributor Abitron for using the Hetronic trademark to market and sell Abitron’s own reverse-engineered remote controls. The district court jury returned a verdict to the tune of $90 million, finding that Abitron had willfully infringed the Hetronic mark— even though 97% of the infringing sales were made in Europe. The district court entered a final judgment in line with the jury’s verdict as well as a worldwide permanent injunction.

Abitron appealed, but the Tenth Circuit agreed with the trial result, holding Abitron liable for all of the infringing sales on grounds that if a foreign defendant’s conduct has a substantial effect on U.S. commerce, it warrants damages under the Lanham Act. Abitron petitioned the U.S. Supreme Court for a writ of certiorari, and last week the Solicitor General of the United States urged the Supreme Court to grant cert, arguing that Abitron’s case is a suitable vehicle for clarifying the geographic scope of the Lanham Act. Read more

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