ORS 647.105 Remedies for infringement

An owner of a mark registered under this chapter may proceed in a civil action to seek an injunction against the manufacture, use, display or sale of a counterfeit or imitation of the mark. A court of competent jurisdiction may:

Grant injunctions to restrain the manufacture, use, display or sale as the court deems just and reasonable;

Require the defendant to pay to the owner all profits the defendant derived and all damages the owner suffered from the manufacture, use, display or sale; and

Order counterfeits or imitations in the defendant’s possession or under the defendant’s control to be delivered to an officer of the court or the owner to be destroyed.

If the court finds that the defendant acted in bad faith, with knowledge or otherwise according to the circumstances of the case, the court in the court’s discretion may enter a judgment in an amount not to exceed three times the sum of the defendant’s profits and the owner’s damages and reasonable attorney fees. If the court finds that the plaintiff acted in bad faith, vexatiously, wantonly or for oppressive reasons, the court in the court’s discretion may award reasonable attorney fees to the defendant. [1961 c.497 §12; 1965 c.511 §11; 1985 c.566 §2; 2009 c.459 §15] 647.107 Grounds for injunctive relief; famous marks. (1) Subject to the principles of equity, the owner of a mark that is famous and distinctive in this state, inherently or through acquired distinctiveness, is entitled to an injunction against another person’s commercial use of the mark if:

The other person’s use began after the mark became famous; and

The use is likely to cause dilution of the famous mark.

A mark is famous if the general consuming public of this state or of a geographic area within this state widely recognizes the mark as a designation of the source of the mark owner’s goods or services. In determining whether a mark is famous, a court may consider factors such as:

The duration, extent and geographic reach of advertising and publicity of the mark in this state by the owner or by other persons;

The amount, volume and geographic extent of sales of goods or services offered under the mark in this state;

The extent to which the mark is actually recognized in this state; and

Whether the mark is registered in this state, appears on the principal register created under the Trademark Act of 1946, 60 Stat. 427, 15 U.S.C. 1051 et seq., or is otherwise registered under federal law.

In an action brought under this section, the owner of a famous mark is entitled to injunctive relief throughout the geographic area in which the court finds that the mark became famous before the other person began the other person’s use of the mark. The court may not order injunctive relief outside this state.

If the court finds that the other person willfully intended to cause dilution of the famous mark, the owner is entitled to the remedies provided in this chapter, subject to the court’s discretion and the principles of equity.

An owner of a famous mark may not bring an action for another person’s use if the use is a nominative or descriptive fair use or facilitation of a nominative or descriptive fair use, other than as a designation of source for the other person’s own goods or services, including a use:

In connection with:

Advertising or promotion that permits consumers to compare goods or services; or

Identifying or parodying, criticizing or commenting upon the owner of the famous mark or the goods or services of the owner of the famous mark;

That is noncommercial; or

That constitutes news reporting or news commentary.