2005 California Business and Professions Code Sections 14340-14342 Article 13. Remedies

14340.  (a) Any owner of a mark registered under this chapter may
proceed by suit to enjoin the manufacture, use, display, or sale of
any counterfeits thereof and any court of competent jurisdiction may
grant injunctions to restrain such manufacture, use, display, or sale
as may be deemed just and reasonable, and shall require the
defendants to pay to the owner up to three times their profits from,
and up to three times all damages suffered by reason of, the wrongful
manufacture, use, display, or sale.
   If, in any action brought under this section, the court determines
that a mark is counterfeit, the court may order the destruction of
all such marks, all means of making the marks, and all goods,
articles, or other matter bearing the marks, which are in the
possession or control of the court or any party to the action; or,
after obliteration of the counterfeit mark, the court may dispose of
those materials by ordering their transfer to the State of
California, a civil claimant, an eleemosynary institution, or any
appropriate private person other than the person from whom the
materials were obtained.
   (b) The court, upon motion or ex parte application by a plaintiff
in a suit to enjoin the manufacture, use, display, or sale of
counterfeits, may order seizure of the counterfeit goods from persons
manufacturing, displaying for sale, or selling the goods, upon a
showing of good cause and a probability of success on the merits and
upon the posting of an undertaking pursuant to subdivision (e).  If
it appears from the ex parte application that there is good reason
for proceeding without notification to the defendant, the court may,
for good cause shown, waive the requirement of notice for the ex
parte proceeding.  The order of seizure shall specifically set forth
(1) the date or dates on which the seizure is ordered to take place,
(2) a description of the counterfeit goods to be seized, (3) the
identity of the persons or class of persons to effect seizure, (4) a
description of the location or locations at which seizure is to
occur, and (5) a hearing date not more than 10 court days after the
last date on which seizure is ordered at which any person from whom
goods are seized may appear and seek release of the seized goods.
Any person from whom seizure is effected shall be served with the
order at the time of seizure.
   (c) Any person who causes seizure of goods which are not
counterfeits shall be liable in an amount equal to the following:
   (1) Any damages proximately caused to any person having a
financial interest in the seized goods by the seizure of goods which
are not counterfeit.
   (2) Costs incurred in defending against seizure of noncounterfeit
goods.
   (3) Upon a showing that the person causing the seizure to occur
acted in bad faith, expenses, including reasonable attorneys' fees
expended in defending against the seizure of any noncounterfeit or
noninfringing goods.
   (4) Punitive damages, if warranted.
   (d) A person entitled to recover may seek a recovery pursuant to
subdivision (c) by cross-claim or motion made in the trial court and
served pursuant to Section 1011 of the Code of Civil Procedure.  A
person seeking a recovery pursuant to this section may join any
surety on an undertaking posted pursuant to subdivision (b), and any
judgment of liability shall bind the person liable pursuant to
subdivision (c) and the surety jointly and severally, but the
liability of the surety shall be limited to the amount of the
undertaking.
   (e) The court shall set the amount of the undertaking required by
subdivision (b) in accordance with the probable recovery of damages,
costs, and expenses under subdivision (c) if it were ultimately
determined that the goods seized were not counterfeit.
   (f) Any person entitled to recover under subdivision (c) may,
within 30 days after the date of seizure, object to the undertaking
on the grounds that the surety or the amount of undertaking is
insufficient.
   (g) The motion or application filed pursuant to subdivision (b)
shall include a statement advising the person from whom the goods are
seized that the undertaking has been filed; informing him or her of
his or her right to object to the undertaking on the grounds that the
surety or the amount of the undertaking is insufficient; and
advising the person from whom the goods are seized that such
objection to the undertaking would be made within 30 days after the
date of seizure.
   (h) For purposes of this section, the term "counterfeit" means a
spurious mark which is identical with, or substantially
indistinguishable from, a registered mark and which is used on or in
connection with goods or services for which the genuine mark is
registered.
14341.  The enumeration of any right or remedy in this chapter shall
not affect a registrant's right to prosecute under any penal law of
this state including, but not limited to, Section 350 of the Penal
Code.
14342.  No service mark or trademark registered pursuant to this
chapter shall be enforced under the provisions of Section 14320,
14330, or 14340, or Section 350 of the Penal Code, against any party
who has adopted and lawfully used the same or a confusingly similar
service mark in the rendition of like services or trademark in the
manufacture or sale of like goods in the State of California from a
date prior to the effective date of registration of the service mark
or trademark under this chapter.