Trademark Injunction Overturned Due To Delay

The First Circuit reversed a preliminary injunction granted by Judge O’Toole last February ordering Voice of the Arab World to cease using the mark MDTV in connection with medical related internet programming or services.  Reversal was ordered based on excessive delays, and the fact that VOAW’s use of the mark was known for 10 years prior to bringing suit. 

The injunction was originally based on use by VOAW that began in 2009 when the wording on its website changed.  The 1st Circuit held, however, that the course of dealings between the parties during the previous years (over several years they had tried to come to a resolution regarding VOAW’s use of the mark to no avail) outweighed the “minimal likelihood of qualitatively new harm arising from those revisions.”      

The First Circuit also held that the traditional equitable principles discussed by the Supreme Court in eBay dealing with patent injunctions apply in trademark cases, but refrained from determining whether the traditional presumption of irreparable harm upon a finding of likelihood of success is consistent with such principles.  “This is due to the fact that such presumption has been held inapplicable in cases where, as here, the plaintiff delays excessively in seeking injunctive relief.”  

Voice of the Arab World, Inc. v. MDTV Medical News Now, Inc., 10-1396 (1st Cir. May 27, 2011)

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