In a December 17, 2013 ruling, Judge Richard J. Sullivan entered judgment against defendant Asiarim Corporation after a bench trial in favor of plaintiff C=Holdings B.V. on its claim, among others, for trademark infringement of the "Commodore" marks for computers that were popular in the 1980's. The principal dispute at trial was the ownership of C=Holdings, which had been a subsidiary of Asiarim until a claimed spin-off. There was no dispute at trial that C=Holdings owned the registrations for the Commodore marks, and that another subsidiary of Asiarim had previously been licensed to use the marks. Judge Sullivan began the analysis of the trademark infringement claim by noting that "when a plaintiff sues for infringement of its registered mark, the defendant bears the burden of production and persuasion to rebut the presumption of ownership" of the mark provided by the registration. Judge Sullivan rejected defendant Asiarim's contention that it was the owner of the mark, in fact ruling that Asiarim's attempt to claim ownership was fraudulent. Thus, the Court concluded "that C=Holdings owns the Commodore trademarks, and that any unsanctioned use by Asiarim would amount to an infringement."
As to the other elements of the trademark infringement claim, Judge Sullivan ruled that Asiarim's advertising of Commodore-branded products on the Internet was sufficient to show use in commerce even though C=Holdings did not show any actual infringing sales of infringing products. The Court found likelihood of confusion by relying on the settled law that "'[w]hen an ex-licensee continues to use a mark after its license expires, likelihood of confusion is established as a matter of law.'" Thus, Judge Sullivan concluded that "because Asiarim used counterfeit marks and continued to use marks after its relationship with C=Holdings ended, the Court concludes that C=Holdings has established consumer confusion as a result of Asiarim's infringing use." The Court also ruled that the same conduct -- Asiarim's advertising of Commodore-branded merchandise on the Internet -- constituted false advertising and unfair competition under Section 43(a) of the Lanham Act.
