New Directions For Laches Defence

World Trademark Review
August 2009

The laches defence can prove an effective weapon for striking out a trademark infringement claim in the United States. However, a controversial ruling from the Ninth Circuit may have served to raise the evidentiary burden placed on defendants.

One of the equitable defences available to defendants in US trademark infringement suits is laches. If proven, laches can bar some or all of the relief requested by the plaintiff. To establish laches, a defendant must prove that:

• the plaintiff unreasonably delayed in enforcing its rights; and
• the delay caused prejudice to the defendant.

While most cases involving laches have tended to focus on what constitutes 'unreasonable delay', a recent decision from the Ninth Circuit Court of Appeals provides new guidance on the concept of 'prejudice' and what a defendant must prove to establish this element. In Internet Specialties West Inc v Milon-DiGiorgio Enters Inc (559 F3d 985 (9th Cir