132.033 Suit to enjoin use of mark.

(1) Every person, association or union adopting or using a mark may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeit mark identical to or substantially identical to that mark.

(2)

(a) If the person, association or union proves by a preponderance of the evidence that the defendant engaged in a violation of this section which threatens the person, association or union with irreparable injury, a court may grant an injunction to restrain such manufacture, use, display or sale and shall order that all such counterfeit marks in the possession or under the control of any defendant be delivered to the court to be destroyed.

(b) Except as provided in par. (c), if the person, association or union proves injury and monetary damages by a preponderance of the evidence the court may award the person, association or union actual damages resulting from such manufacture, use, sale or display or an amount not to exceed 3 times the defendant's profits directly resulting from such wrongful manufacture, use, display or sale.

(c) If the person, association or union proves by a preponderance of the evidence that the defendant acted willfully, the court shall award the greater of actual damages resulting from the manufacture, use, sale or display or an amount equal to 3 times the defendant's profits directly resulting from the manufacture, use, sale or display.

(d) If the person, association or union proves a violation by a preponderance of the evidence, the court may award the costs of investigating the violation and of prosecuting the suit, including reasonable investigator and attorney fees.

(3) In case such association or union is not incorporated, such actions may be commenced and prosecuted by an officer or member of such association or union on behalf of and for the use of such association or union.

(4) This section does not apply to the purchase of merchandise in good faith from a distributor or the retail sale of that merchandise in good faith.

(5) Any of the following is a defense to liability under this section:

(a) The registrant fraudulently obtained the mark registration.

(b) The registrant abandoned the mark.

(c) The mark is used by the registrant, or with the permission of the registrant or a person in privity with the registrant, to misrepresent the source of the goods or services in connection with which the mark is used.

(d) The use of the name, term or device alleged to be an infringement is a use, except for a use as a trade or service mark, of any of the following:

1. The party's name in the party's business.

2. The name of any person in privity with the party.

3. A term or device which is descriptive of, and which is used fairly and in good faith only to describe to users, the party's goods and services or the geographic origin of the party's goods and services.

(e) The mark has been or is used to violate the Sherman act, 15 USC 1 et. seq., the Clayton act, 15 USC 12 et. seq., or ch. 133.

(f) Before the person, association or union registered a mark under s. 132.01 the defendant acquired the right under common law or federal law to manufacture, use, display or sell an identical mark.

History: 1985 a. 181.

For a challenged mark to be “identical to or substantially identical to" a registered mark under sub. (1), it must be an exact copy or substantially indistinguishable from the registered mark. Madison Reprographics v. Cook's Reprographics, 203 Wis. 2d 226, 552 N.W.2d 440 (Ct. App. 1996), 95-2596.