A court in El Paso, Texas recently applied the test of “willful blindness,” normally reserved for fraud cases, to a Lanham Act claim. In determining that the defendant in a trademark infringement case was not liable for willful infringement, the court looked at whether the defendant had intentionally ignored signs of possible infringement.

The case involved a Canadian importer of cigarettes bearing the MARLBORO trademark. The cigarettes in question were actually counterfeit, which the importer might have known given the price he was being charged. Suspicious, the importer/defendant inspected cigarettes to confirm their authenticity, and upon a visual review, determined they were authentic. They weren’t: when U.S. Customs reported the find, Phillip Morris sued, alleging willful trademark infringement, and requesting statutory damages of $1 Million for each trademark infringed. 15 U.S.C. §1117(C)(2).

Finding that the defendant’s conduct could fit no traditional measure of willfulness, the court applied the “willful blindness” test used generally in fraud cases. Under a willful blindness theory, a defendant is liable if he is subjectively aware of a high probability of the illegal conduct, but purposely avoids learning of the conduct. After looking at the defendant’s conduct, the court determined that defendant had not engaged in willful infringement. While defendant’s behavior showed a lack of diligence, and the cost of the cigarettes should have tipped off the defendant that the cigarettes were counterfeit, the court determined that defendant’s attempts to authenticate the cigarettes were sufficient to find that he had not willfully turned a blind eye to indicators that the cigarettes he was importing were counterfeit.

This entry was posted by Tsan Abrahamson on Thursday, April 24th, 2008 at 10:53 am and is filed under Trademarks. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed.