Any owner of a mark registered under the Trademark Act may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations of that mark and any court of competent jurisdiction may grant injunctions to restrain the manufacture, use, display or sale as may be deemed just and reasonable by the court. The court may require the defendants to pay to the owner all profits derived from or all damages suffered by reason of the wrongful manufacture, use, display or sale, or by both payment of all profits derived and damages suffered. The court may also order that any counterfeits or imitations in the possession or under the control of any defendant in the case be delivered to an officer of the court or to the complainant and that the counterfeits or imitations be destroyed. The court, in its discretion, may enter judgment for an amount not to exceed three times the profits and damages and for reasonable attorney fees of the prevailing party in those cases where the court finds the other party committed the wrongful acts with knowledge or in bad faith or as otherwise the circumstances of the case may warrant. The enumeration of any right or remedy in this section shall not affect a registrant's right to prosecute under any criminal law of this state.

History: Laws 1997, ch. 197, § 16.

Prior good faith use superior to registration. — Prior registration of a trade name under New Mexico's trademark statute does not foreclose another party from acquiring the right to use that name in good faith under the common law, and the trial court's determination that the plaintiff had the exclusive right to use a contested name for his video rental stores was correct, since the plaintiff established a good faith acquisition of a trade name at common law, and his rights became superior to those of the defendant, whose prior state registration was not accompanied by prior use in the market area in question. S & S Invs., Inc. v. Hooper Enters., Ltd., 1993-NMCA-122, 116 N.M. 393, 862 P.2d 1252.

Injunction granted even where plaintiff merely asserting right to use. — While injunctive relief is most often granted against some actual use of the infringing mark in the disputed area, such relief is proper where the plaintiff is asserting the right to such use, but has not actively been using the mark in a disputed market. Value House v. Phillips Mercantile Co., 523 F.2d 424 (10th Cir. 1975).

Am. Jur. 2d, A.L.R. and C.J.S. references. — 74 Am. Jur. 2d Trademarks and Tradenames §§ 145 to 152.

Rights and remedies with respect to another's use of a deceptively similar advertising slogan, 2 A.L.R.3d 748.

87 C.J.S. Trademarks, Tradenames and Unfair Competition §§ 135, 188, 189.