N.Y.
General Business Law Section 360-M
Remedies
1.
Any owner of a mark registered under this article may proceed by suit to enjoin the manufacture, use, display or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be by the said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display or sale; and such court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed or donated. The court, in its discretion, may enter judgment for an amount not to exceed three times such profits and damages and/or reasonable attorneys’ fees of the prevailing party in such cases where the court finds the other party committed such wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of this case. The enumeration of any right or remedy herein shall not affect a registrant’s right to prosecute under the penal law.2.
If a court makes a determination that the counterfeit or imitation products should be donated, then notice of that determination shall be given to the lawful mark owner of the products. The notice shall state that the court intends to donate the seized products to help indigent individuals and that the donation will proceed unless the lawful mark owner objects to the donation, in writing. The lawful mark owner will have thirty days to object to the court to the donation. If the lawful mark owner does not object, or gives no response within that period despite having received the notice, then the court shall take that as a granting of consent by the lawful mark owner that the donation should proceed.3.
The counterfeit or imitation products may only be given to a not-for-profit corporation that has an established history of providing goods and services to indigent individuals. Organizations may petition the court to be considered a recipient of the counterfeit or imitation products. The judge, in his or her sole discretion, shall determine whether an organization qualifies pursuant to this subdivision and which organization shall receive the counterfeit or imitation products.4.
Any counterfeit or imitation products received by an organization through this section may not be sold by the organization, nor may any person or entity in possession of any of these products sell such products.5.
Any not-for-profit corporation that has received counterfeit or imitation products through this section must have the products’ identifying lawful mark tags removed or have the products marked, altered, imprinted or indelibly stamped so as to prevent their resale or any confusion with the actual products of the lawful mark owner. Such products must also be inspected by the not-for-profit corporation to ensure that they are in a condition consistent with the federal consumer safety standards that would ordinarily apply to the sale of comparable legitimate products.6.
Provided, however, that the only counterfeit or imitation products that may be donated pursuant to this section shall be clothing, including shoes, and all other counterfeit or imitation products must be destroyed in accordance with this section or any other provision of applicable law.
Source:
Section 360-M — Remedies, https://www.nysenate.gov/legislation/laws/GBS/360-M (updated Feb. 27, 2015; accessed Oct. 26, 2024).
