A Blog About Intellectual Property Litigation and the District of Delaware

Despite a 2020 change in the law designed to make obtaining a preliminary injunction easier for plaintiffs in trademark cases, Judge Stark denied a trademark plaintiff's motion for preliminary injunction, finding that the defendant had effectively rebutted the statutorily-imposed presumption of irreparable harm.

Bad news for these guys perhaps.
Bad news for these guys perhaps. green insect, horror by numbers, Unsplash

In Nichino America, Inc. v. Valent U.S.A., LLC, C.A. No. 20-704-LPS, the plaintiff sought preliminary injunctive relief, arguing that the defendant's use of the Senstar mark in connection with an insecticide product was infringing its Centaur mark, also used to market insecticides. After applying the ten-factor Lapp test, Judge Stark concluded that the plaintiff had shown a likelihood of confusion and thus established a likelihood of success on the merits.

Judge Stark explained that after oral argument on the motion for preliminary injunction, the Trademark Modernization Act had been signed into law. The TMA creates a rebuttable presumption of irreparable harm upon a finding of a likelihood of success. That plaintiff-friendly change did not help the plaintiff, however, because Judge Stark found that the defendant had rebutted the presumption by pointing to a lack of any actual confusion for the nine months both products had been on the market, and by showing that the typical purchaser of these commercial insecticide products in the largest market for plaintiff (California) is sophisticated.

Although he was not required to do so, Judge Stark also examined the other preliminary injunction factors (balance of equities and public interest) and found that neither favored an injunction.

If you enjoyed this post, consider subscribing to receive free daily or weekly e-mails about any new posts.