This text of Indiana § 24-2-1-13.5 (Fanciful marks; famous marks; injunctive relief; remedies; attorney's
fees) is published on Counsel Stack Legal Research, covering Indiana primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.
5.
(a)This section applies only to fanciful
marks, except in cases where the other person's use tarnishes the
reputation of the famous mark.
(b)An owner of a mark that is famous in Indiana is entitled, subject
to the principles of equity and terms a court considers reasonable, to an
injunction against another person's commercial use of the mark or trade
name if the other person's use begins after the mark has become famous
and the other person's use causes dilution of the distinctive quality of
the mark, and to other relief provided in this section. In determining
whether a mark is distinctive and famous, a court may consider factors
such as:
(1)the degree of inherent or acquired distinctiveness of the mark
in Indiana;
(2)the duration and extent of use of the mark in connection with
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5. (a) This section applies only to fanciful
marks, except in cases where the other person's use tarnishes the
reputation of the famous mark.
(b) An owner of a mark that is famous in Indiana is entitled, subject
to the principles of equity and terms a court considers reasonable, to an
injunction against another person's commercial use of the mark or trade
name if the other person's use begins after the mark has become famous
and the other person's use causes dilution of the distinctive quality of
the mark, and to other relief provided in this section. In determining
whether a mark is distinctive and famous, a court may consider factors
such as:
(1) the degree of inherent or acquired distinctiveness of the mark
in Indiana;
(2) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used;
(3) the duration and extent of advertising and publicity of the
mark in Indiana;
(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
mark is used;
(6) the degree of recognition of the mark in the trading areas and
channels of trade in Indiana as it relates to the use of the mark by
the:
(A) mark's owner; and
(B) person against whom the injunction is sought;
(7) the nature and extent of use of the same or a similar mark by
a third party; and
(8) whether the mark is the subject of a:
(A) registration in Indiana;
(B) federal registration under the Act of March 3, 1881;
(C) federal registration under the Act of February 20, 1905; or
(D) registration on the principal register.
(c) In an action brought under this section, the owner of a famous
mark is entitled only to injunctive relief unless the person against
whom the injunctive relief is sought willfully intended to trade on the
owner's reputation or to cause dilution of the famous mark. If willful
intent is proven, the owner of the famous mark is entitled to the other
remedies set forth in this section, subject to the discretion of the court
and the principles of equity.
(d) A court may require a defendant to pay to the owner of a mark
all profits derived from and damages suffered by reason of the use of
the mark in violation of this section and, in exceptional cases, may
award reasonable attorney's fees to the prevailing party.
(e) The following are not actionable under this section:
(1) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing
goods or services of the owner of the famous mark.
(2) Noncommercial use of the mark.
(3) All forms of news reporting and news commentary.