Sec. 35-11i. Illegal use of mark. Remedies. - Connecticut Statutes

      Sec. 35-11i. Illegal use of mark. Remedies. (a) Subject to the provisions of section 35-11k, any person who (1) uses in Connecticut, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this chapter in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services or (2) reproduces, counterfeits, copies or colorably imitates any such mark and applies such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of goods or services on or in connection with which such use is likely to cause confusion or to cause mistake or to deceive purchasers, shall be liable in a civil action by the registrant for any or all of the remedies provided in subsection (b) of this section, except that under subdivision (2) of this subsection the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or to cause mistake or to deceive.

      (b) Any registrant of a mark registered under this chapter may proceed by suit to enjoin the wrongful manufacture, use, display or sale of any reproduction, counterfeit or imitation thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be deemed just and reasonable, and may require the defendants to pay to such registrant all profits derived from, or all damages suffered by reason of, such wrongful manufacture, use, display or sale or both such profits and damages; and such court may also order that any such reproduction, counterfeit or imitation in the possession or under the control of any defendant be delivered to an officer of the court to be destroyed, or to the complainant. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee of the prevailing party in such cases where the court finds the other party committed such wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case. The enumeration of any right or remedy herein shall not affect a registrant's right to prosecute under any penal law of this state.

      (c) The registrant of a mark which is famous in this state shall be entitled, subject to the principles of equity, to an injunction against another's use of a mark, commencing after the registrant's mark becomes famous, which causes dilution of the distinctive quality of the registrant's mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is famous, a court may consider factors including, but not limited to the following: (1) The degree of inherent or acquired distinctiveness of the mark in this state; (2) the duration and extent of use of the mark in connection with the goods and services; (3) the duration and extent of advertising and publicity of the mark in this state; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the registrant's mark is used; (6) the degree of recognition of the registrant's mark in its and in the other's trading areas and channels of trade in this state; and (7) the nature and extent of use of the same or similar mark by third parties. The registrant shall be entitled only to injunctive relief in this state in an action brought under this section, unless the subsequent user wilfully intended to trade on the registrant's reputation or to cause dilution of the registrant's mark. If such wilful intent is proven, the registrant shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and the principles of equity.

      (1963, P.A. 51, S. 9; P.A. 93-152, S. 9.)

      History: P.A. 93-152 amended Subsec. (a) to replace "likely to cause confusion or to cause mistake or to deceive purchasers" with "likely to cause confusion or to cause mistake or to deceive as to the source or origin of such goods or services", replace "owner of such registered mark" with "registrant" and replace "committed with knowledge that such imitation is intended to be used to cause confusion or to cause mistake or to deceive purchasers" with "committed with the intent to cause confusion or to cause mistake or to deceive", amended Subsec. (b) to replace "owner" with "registrant", rephrase provision re granting of injunctions and add provision authorizing the court to enter judgment for an amount not to exceed three times such profits and damages and a reasonable attorney's fee when it makes certain findings, and deleted former Subsec. (c) re likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name as a ground for injunctive relief for unauthorized use of such mark or trade name and inserted new Subsec. (c) to entitle the registrant of a mark which is famous to an injunction and other relief against another's use of a mark that causes dilution, set forth the factors a court may consider in determining whether a mark is famous and specify remedies available to a registrant when the subsequent user wilfully intended to trade on the registrant's reputation or to cause dilution.

      Held not applicable in action for injunction against use of similar name by new business firm. 27 CS 200.

      Subsec. (c):

      Cited. 173 C. 261.

      Approximation of FM radio station's assigned frequency does not constitute a service mark. 35 CS 1.