2021 Georgia Code
Title 10 - Commerce and Trade
Chapter 1 - Selling and Other Trade Practices
Article 16 - Trademarks, Service Marks, and Trade Names
Part 1 - Registration and Use of Trademarks and Service Marks
§ 10-1-450. Civil Action for Infringement of Registered Mark

Subject to Code Section 10-1-452, any person who shall:

1. Use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a trademark or service mark registered under this part in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or
2. Reproduce, counterfeit, copy, or colorably imitate any such trademark or service mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of such goods or services;

   shall be liable to a civil action by the owner of such registered trademark or service mark for liquidated damages in the amount of $10,000.00, if such act has been committed with knowledge that the trademark or service mark has been registered under this part and such act has been committed without previously obtaining the consent of the owner thereof, and for any or all of the remedies provided in subsection (a) of Code Section 10-1-451, except that actual damages shall not be recoverable when liquidated damages are sought, and except that under paragraph (2) of this Code section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such trademark or service mark is intended to be used to cause confusion or mistake or to deceive.

(Ga. L. 1893, p. 134, § 4; Civil Code 1895, § 1739; Civil Code 1910, § 1991; Code 1933, § 106-103; Ga. L. 1952, p. 134, § 16; Ga. L. 1963, p. 463, § 11; Ga. L. 1988, p. 1458, § 2.)

- For article, "Corporate Software Piracy: Is Your Client (or Your Firm) Liable?," see 22 Ga. St. B. J. 30 (1985).

JUDICIAL DECISIONS

Part similar to federal statute.

- Georgia law on registration of trademarks and service marks provides for a civil action to remedy infringements and is, both in structure and purpose, similar to its federal counterpart. Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689 (N.D. Ga. 1977).

Actions involving trademarks or service marks are limited to infringements of registered marks. Miller & Meier & Assocs. v. Diedrich, 174 Ga. App. 249, 329 S.E.2d 918, aff'd in part, rev'd in part on other grounds, 254 Ga. 734, 334 S.E.2d 308 (1985).

- Registration of a logo as a service mark or trademark is a prerequisite to relief under O.C.G.A. §§ 10-1-450 and10-1-451. Diedrich v. Miller & Meier & Assocs., 254 Ga. 734, 334 S.E.2d 308 (1985).

Limited liability company was entitled to summary judgment on the investment partnership's claims under § 43(a) (15 U.S.C. § 1125(a)) of the Lanham Act and O.C.G.A. §§ 10-1-450 and10-1-451 that the company infringed the trademarks and trade dress associated with three brands because: (1) the trademark was not registered with the Georgia Secretary of State pursuant to §§ 10-1-450 and10-1-451; and (2) there was no evidence to show that the trade dress associated with the products at issue was inherently distinctive as a matter of law and there was no evidence that the mark had secondary meaning identifying the investment partnership as the source of any products. Brown Bark II, L.P. v. Dixie Mills, LLC, 732 F. Supp. 2d 1353 (N.D. Ga. 2010).

- Summary judgment was inappropriate as to trademark infringement liability because while the "Xylem" mark was at least suggestive, the marks were substantially similar, and the trademark holder documented over 100 instances of actual confusion resulting from misdirected checks, phone calls, faxes, and emails; the court could not find that no reasonable juror would find there was no confusion created by the accused infringer's use of the Xylem name and mark. ITT Corp. v. Xylem Group, LLC, F. Supp. 2d (N.D. Ga. Aug. 5, 2013).

- Tattoo studio owner showed that it had achieved secondary meaning in the name Inkaholics in the metro Atlanta area before the defendants commenced using the similar name Inkaholiks in that area (and evidence of resulting confusion); the trial court did not err in granting the owner a preliminary injunction in the metro Atlanta area. Inkaholiks Luxury Tattoos Georgia, LLC v. Parton, 324 Ga. App. 769, 751 S.E.2d 561 (2013).

- In a suit alleging, inter alia, the infringement of state registered service marks, the trial court properly granted the plaintiff interlocutory relief because it was undisputed that the plaintiff was the last entity to hold the named pageants prior to the interlocutory injunction hearing, regardless of any issues of registration of service marks or abandonment or assignment by the defendant; thus, the status quo was the plaintiff being the host of the events using the marks. India-American Cultural Ass'n v. iLink Professionals, Inc., 296 Ga. 668, 769 S.E.2d 905 (2015).

Cited in Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833 (11th Cir. 1983); Lone Star Steakhouse & Saloon v. Longhorn Steaks, Inc., 106 F.3d 355 (11th Cir. 1997); Mazdak Auto Towing & Serv., Inc. v. Midcontinental Group, Inc., 231 Ga. App. 859, 501 S.E.2d 44 (1998).

RESEARCH REFERENCES

Am. Jur. 2d.

- 74 Am. Jur. 2d, Trademarks and Tradenames, §§ 78 et seq., 85 et seq., 125 et seq.

23A Am. Jur. Pleading and Practice Forms, Trademarks and Tradenames, §§ 73 et seq., 75 et seq.

- 87 C.J.S., Trade-Marks, Trade-Names, and Unfair Competition, § 368.

- Right to protection against simulation of physical appearance or arrangement of place of business, or vehicle, 17 A.L.R. 784; 28 A.L.R. 114.

Right to protection against use of trademark or trade name beyond the territory in which plaintiff operates, 36 A.L.R. 922.

Right, in absence of self-imposed restraint, to use one's own name for business purposes to detriment of another using the same or a similar name, 47 A.L.R. 1189; 44 A.L.R.2d 1156.

Liability for innocent infringement of trademark or trade name, 96 A.L.R. 651.

Protection of business or trading corporation against use of same or similar name by another corporation, 115 A.L.R. 1241.

Doctrine of secondary meaning in the law of trademarks and of unfair competition, 150 A.L.R. 1067.

Jurisdiction of state court over actions involving patents, 167 A.L.R. 1114.

Damages recoverable for wrongful registration of trademark, 26 A.L.R.2d 1184.

World wide web domain as violating state trademark protection statute or state unfair trade practices act, 96 A.L.R.5th 1.

Reverse confusion doctrine under state trademark law, 114 A.L.R.5th 129.

Application of secondary meaning test in action for trade dress infringement under § 43(e) of Lanham Act (15 USCS § 1125(a)), 87 A.L.R. Fed. 15.

Parody as trademark or tradename infringement, 92 A.L.R. Fed. 25.

Admissibility and weight of consumer survey in litigation under trademark opposition, trademark infringement, and false designation of origin provisions of Lanham Act (15 USCS §§ 1063, 1114, and 1125), 98 A.L.R. Fed. 20.

"Post-sale confusion" in trademark or trade dress infringement actions under § 43 of the Lanham Trade-Mark Act (15 USCA § 1125), 145 A.L.R. Fed. 407.

Liability as vicarious or contributory infringer under Lanham Act - Modern cases, 152 A.L.R. Fed. 573.

When is trade dress "inherently distinctive" for purposes of trade dress infringement actions under § 43(a) of Lanham Act (15 USCA § 1125(a)) - Cases after Two Pesos, 161 A.L.R. Fed. 327.

Parody as trademark or tradename dilution or infringement, 179 A.L.R. Fed. 181.

Application of doctrine of "reverse passing off" under Lanham Act, 194 A.L.R. Fed. 175.

Lanham Act trademark infringement actions in internet and website context, 197 A.L.R. Fed. 17.

Validity, construction, and application of State Trademark Counterfeiting Statutes, 63 A.L.R. 6th 303.