MAJORICA, S.A., Plaintiff-Appellee, v. R.H. MACY & CO., INC., Defendant-Appellant

United States Court of Appeals for the Second Circuit1985-05-02No. Cal. No. 1031, Docket 85-7030

762 F.2d 7

Summary · law.co

Holding. The preliminary injunction granted by the district court is reversed. Significant delay in seeking preliminary injunctive relief in a trademark infringement case negates the presumption of irreparable harm and may alone justify denial of the preliminary injunction.

Majorica, a seller of pearls under the registered trademark "Majorica," sought a preliminary injunction against R.H. Macy & Co. for using "Majorca" as part of its trade name for pearl sales. Majorica was aware of Macy's conduct for years but did not request injunctive relief until nearly seven months after filing suit. The district court rejected Macy's delay argument by treating it as a laches defense and requiring proof of prejudice, but this approach applied incorrect legal standards.

The appellate court clarified that while delay alone may not constitute laches sufficient to bar permanent relief, it remains highly relevant to whether preliminary injunctive relief should be granted. Delay in pursuing injunctive relief undermines the showing of irreparable harm necessary for preliminary relief, even without proof of prejudice to the defendant. Because the district court failed to consider Majorica's significant delay as evidence against irreparable harm, the preliminary injunction order could not stand.

Summary generated by law.co from the public-domain opinion. The opinion text itself is public domain.

Key issues

Whether delay in seeking preliminary injunctive relief defeats the requirement of irreparable harm
Distinction between laches as a bar to permanent relief versus delay as evidence against preliminary relief
Standards for granting preliminary injunctions in trademark infringement cases

Procedural posture

The defendant-appellant Macy appealed from a district court order granting plaintiff-appellee Majorica's motion for a preliminary injunction in a trademark infringement action.

Authorities cited

No cited authorities resolved to law.co cases yet.

Opinion · public domain

majority opinion

PER CURIAM.

R.H. Macy & Co., Inc. appeals from an order of the United States District Court for the Southern District of New York (Ward, J.), entered on December 12, 1984, granting a motion by Majorica, S.A. for a preliminary injunction in Majorica’s action for trademark infringement and unfair competition. Because the district court applied incorrect legal standards in determining the crucial issue of irreparable harm, see Buffalo Forge Co. v. Ampco-Pittsburgh Corp., 638 F.2d 568, 569 (2d Cir. 1981), we are compelled to reverse.

The conflict between the parties involves the alleged unlawful use of the word “Majorca” as part of the trade name under which Macy sells simulated pearls manufactured on the Island of Majorca. Majorica, which sells pearls bearing the registered trade name “Majorica”, asserts that Macy is infringing and diluting its trademark and is guilty of unfair competition, all of which Macy denies. It is undisputed that Majorica was aware of the conduct complained of for several years prior to its motion for a preliminary injunction. Moreover, although Majorica commenced this action on April 10, 1984, it did not seek preliminary injunctive relief until November 9, 1984.

Instead of considering Majorica’s extensive delay for the undercutting effect it had on Majorica’s claim of irreparable harm, the district court treated Macy’s argument of undue delay as a “laches” defense. The court then rejected that defense because, it said, Macy failed to demonstrate prejudice resulting from the delay. If there was any doubt as to the impropriety of that holding at the time it was made, but see Exxon Corp. v. Xoil Energy Resources, Inc., 552 F.Supp. 1008, 1012 (S.D.N.Y.1981); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 609 (S.D.N.Y.1979), that doubt was removed by this Court’s subsequent decision in Citibank, N.A. v. Citytrust, 756 F.2d 273, 275-76 (2d Cir.1985). There, we said:

Although a particular period of delay may not rise to the level of laches and thereby bar a permanent injunction, it may still indicate an absence of the kind of irreparable harm required to support a preliminary injunction.

Lack of diligence, standing alone, is insufficient to support a claim of laches; the party asserting the claim also must establish that it was prejudiced by the delay. Costello v. United States, 365 U.S. 265, 282, 81 S.Ct. 534, 543, 5 L.Ed.2d 551 (1961). Lack of diligence, standing alone, may, however, preclude the granting of preliminary injunctive relief, because it goes primarily to the issue of irreparable harm rather than occasioned prejudice. “Significant delay in applying for injunctive relief in a trademark case tends to neutralize any presumption that infringement alone will cause irreparable harm pending trial, and such delay alone may justify denial of a preliminary injunction for trademark infringement.” Citibank, N.A. v. Citytrust, supra, at 276.

The failure of the district court to apply the foregoing principles requires reversal. Such disposition does not, of course, bear upon the merits of Majoricas claim for permanent relief. It appears to us, however, that both parties would benefit from a prompt decision on the merits.

Reversed.