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Shareholder Andrew Avsec Quoted in World Trademark Review
Published By World Trademark Review
May 15, 2020

On May 15, 2020, Shareholder Andrew Avsec was quoted in the article, "'Lucky finally gets lucky' as Supreme Court issues defence preclusion decision," published by World Trademark Review.  See below for excerpts from the article:

The Supreme Court has issued its decision in Lucky Brand Dungarees v Marcel Fashion Group, the dispute centring on the issue of whether res judicata in the form of claim preclusion can also apply to defenses. One expert reflects that, with this decision, “Lucky finally gets lucky and nearly 20 years of trademark trench warfare continues”.

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For Andrew Avsec of Brinks Gilson & Lione: “The court appeared to reject ‘defense preclusion’ as a standalone category of res judicata, but found that defenses may be precluded only if such defenses satisfy the strictures of traditional issue preclusion or claim preclusion principles”

While that is the case, Avsec does identify a number of takeaways for trademark litigants: “First, the decision makes clear that traditional principles of res judicata apply to defenses; however, the court did not adopt a new ‘defense preclusion’ test. Therefore, trademark litigation plaintiffs must appreciate that asserting new claims will open the door for defendants to assert new defenses. Defendants in trademark litigation should likewise view the assertion of new claims as an opportunity to reassess their defenses, even if those defenses may have been previously available.”

A second takeaway focuses on footnote three in the decision: “In that footnote, the court suggests that after securing a final judgment, a trademark plaintiff may be able to pursue supplemental relief in the original action without opening up the plaintiff to new defenses. Thus, rather than filing a new lawsuit, plaintiffs should consider whether contempt proceedings in the original action are available, and if so, if a contempt proceeding might provide a better vehicle to enforce their rights.”

See the full article at World Trademark Review.  

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