Polaroid Corporation v.

Polarad Electronics Corporation

Court of Appeals - Second Circuit – 1961
287 F.2d 492
First impression: it looks like a short but very concise case brief.
I. Procedural facts
Polaroid Corporation (“Plaintiff”) brought action in the Eastern District of New York alleging an
infringement of trademark and unfair competition by Polarad Electronics Corporation
(“Defendant”, together with the Plaintiff, the “Parties”). More specifically, the Plaintiff challenged
the legality of the use of the name “Polarad” as a trademark and as part of the corporate title by the
Defendant and sought a broad injunction and an accounting.
The Court of first instance dismissed the claim.
The Plaintiff appealed.
II. Facts
The core business of the Parties differs. Indeed, the Plaintiff manufacture and distributes optics and
photography products while the Defendant is engaged in developing and manufacturing electronic
equipment. However, both Parties market some electronic devices related to television.
Long before the Defendant was organized, the name “Polaroid” was adopted and registered as a
trademark by the Plaintiff.
The Plaintiff learned of the Defendant’s use of the name “Polarad” since 1945. However, it brought
suit against the Defendant more than 10 years later, in 1956. In this period, Defendant’s business
had rapidly grown.
III. Issue
Do the delay in proceeding for infringement of the trademark law bars the owner from taking
action against the infringer?
IV. Holding
Yes. If the owner of the trademark does not promptly take action against the infringer, it is barred
from relief, at least if the following conditions are met: (i) the goods marketed by the infringer are
not exactly the same products marketed by the owner of the trademark and (ii) a trademark
infringement is a genuinely debatable question.
V. Reasoning
An owner of a trademark which is informed about an infringement should take action immediately,
at least in the case the products sold are not identical. Indeed, the use of the trademark should be
disrupted, as far as possible, when the infringer suffers little disadvantage by changing to another
name. Otherwise, the owner should unfairly take advantage of the infringer efforts in selling and
marketing its products. The Court made reference to a precedent (Valvoline Oil Co. v. Havoline Oil
Co.) stating that “it cannot be equitable for a well-informed merchant with knowledge of a claimed
invasion of right, to wait and see how successful his competitor will be and then destroy with the
aid of a court decree […] especially in a case where the most that can be said is that the trade-
mark infringement is a genuinely debatable question [e.g. because the products are similar but not
identical]”.
Consequently, in this case any relief could be granted considering that (i) the products marketed by
the Parties are not identical, (ii) it is objectively difficult to determine whether the products
marketed by the Parties are close from a commercial perspective, and (iii) the Plaintiff, well aware
of the alleged infringement, had not promptly taken actions.
However, “if the Defendant should move into new territory more closely related to [Plaintiff’s
products], different considerations […] apply”. What are the different considerations?
VI. Judgement
Circuit Court judgement affirmed.
VII. Other relevant information
The Court makes reference to precedents in order to enumerate a catalogue of circumstances that a
practitioner should consider in order to determine how far a valid trademark shall be protected in
case the owner and the alleged infringer market different products. These are the main variables: (i)
strength of the mark, (ii) degree of similarity between the two marks, (iii) proximity of the products,
(iv) likelihood that the prior owner will bridge the gap, (v) actual confusion, (vi) infringer’s good
faith, (vii) quality of the infringer’s products, and (viii) sophistication of the buyers. According to
the Court, however, this catalogue is not exhaustive, so that other elements could be also taken into
consideration.

Words I do not understand

“broad” injunction
accounting
remark
bridge the gap

It was indeed concise and I was able to properly follow the flow of the facts and the reasoning of
the court. I was somehow confused by the substantial reasoning of the court where it was said that
there should be immediate action at least in the case the products sold are not identical and that the
use of the trademark should be disrupted, as far as possible, when the infringer suffers little
disadvantage by changing to another name. Was it meant that the use of trademark should not be
disrupted when the infringer suffers little disadvantage? Or The use of trademark should be
disrupted? What does “as far as possible” mean?
Format wise, I appreciate that this is quick to read, organized and is efficiently detailed.