Litigation

Ninth Circuit limits recall remedy in trademark case

By Lori Bauman

In a trademark infringement case, a product recall may be available as a remedy when defendant has sold products improperly displaying plaintiff's trademark.  Last week the Ninth Circuit Court of Appeals held that a court may order a product recall as part of a preliminary injunction only if the infringing product poses a substantial risk of danger to the public.

In Marlyn Nutraceuticals v. Mucos Pharma, plaintiff claimed defendant sold a dietary supplement that improperly showed plaintiff's trademark on the label.  The District Court judge issued a preliminary injunction ordering defendant to stop selling the product, and to recall the product it had already sold.  Defendant appealed the scope of the preliminary injunction, contending that it was error to require a recall of the supplements with the infringing mark. 

Adopting a test used in the Third Circuit, the Ninth Circuit held that defendant should not be required to incur the cost of a recall unless plaintiff can show the court granting the preliminary injunction that (1) the infringement was willful or intentional, (2) the risk of injury to the trademark holder is greater than the burden of the recall to defendant, and (3) the infringing activity creates a substantial risk of danger to the public.

In Marlyn, because there was insufficient evidence of a public health risk from allowing the product to remain in the hands of consumers, the District Court erroneously ordered a recall as part of the preliminary injunction.

Full post as published by Northwest Business Litigation Blog on July 10, 2009 (boomark / email).