Intellectual Property Law

Without Resulting Prejudice, Five Year Delay Does Not Support Laches Defense

By Michael Atkins

This is a laches case.

Derek and Constance Lee Corp. sued Kim Seng Co. for trademark infringement.

The Central District of California entered an injunction against Kim Seng.

Kim Seng appealed to the Ninth Circuit based on laches.

Turns out, Kim Seng waited five years to file suit, which the Ninth Circuit found fell outside the analogous statute of limitations period.

That led the court to decide whether Kim Seng was prejudiced by the delay. However, the court concluded it wasn’t, so it found the district court did not err in deciding that laches did not bar plaintiff’s claim.

“There are two commonly recognized forms of prejudice in the laches context — evidentiary prejudice and expectations-based prejudice. Kim Seng has not cited any losses of witnesses or evidence that would constitute evidentiary prejudice. Kim Seng has also failed to show that it suffered expectations-based prejudice. Kim Seng offered no evidence that it invested money in advertising its Que Huong mark and it offered very little evidence that there was any public association between its company and the Que Huong brand. The mere fact that Kim Seng’s business grew based on the success of the Que Huong brand is insufficient to establish prejudice in the laches context. The district court’s conclusion that laches did not apply was not an abuse of discretion.”

The case cite is Derek and Constance Lee Corp. v. Kim Seng Co., 2010 WL 3069878, No. 08-56440, 08-56513, and 08-56687 (9th Cir. Aug. 5, 2010).

Full post as published by Seattle Trademark Lawyer on August 11, 2010 (boomark / email).