P.R. Laws tit. 10, § 223w
Any person who, without the consent of the principal registrant or owner of a mark, reproduces, forges, copies, imitates, uses or attempts to use any mark identical or similar to a mark registered under this chapter, or used in commerce in Puerto Rico before being used by such person, which is likely to cause confusion or deceive as to the origin of the goods or services or as to sponsorship or association, shall be held liable in civil action by the principal registrant or owner and/or the person authorized by the mark owner in writing, any of which may file a lawsuit against such person and request an injunction, a seizure order, an action for damages, and/or any other remedy provided for by law.
If the case is settled in favor of the plaintiff, the court shall fix the amount of the damages, taking the following elements as basis: the gross profit that the mark infringing party has made by using the said mark; the amount of earnings that the plaintiff has failed to receive as a result of the actions of the defendant; the diminishing returns that the actions of the defendant have caused the plaintiff; and any other factor that, in the judgment of the court, adequately quantifies the damages.
The court, in its discretion, may fix the amount of damages in an amount not to exceed three times the profit of the defendant and/or the loss of the plaintiff when the court finds that the violation was intentional or in bad faith.
Likewise, when the court finds that the defendant was not aware and had no reason to know or to believe that his/her actions constituted a violation of the trademarks rights of the plaintiff, the court, in its discretion, may reduce the amount of damages.
Otherwise, the principal registrant or owner may choose to request that the court rule for statutory damages. Statutory damages may be fixed in an amount of not less than seven hundred fifty dollars ($750) or more than thirty thousand dollars ($30,000) per violation, as deemed to be fair by the court. This alternative is only available for the principal registrant of the mark. In the event that the principal registrant proves and the court so finds, that the violation was intentional, the court, in its discretion, may increase the amount of statutory damages to a sum not greater than one hundred fifty thousand dollars ($150,000) per violation. In the event that the defendant proves and the court so finds, that such defendant was unaware and had no reason to know or to believe that his/her actions constituted a violation of the trademark rights of the plaintiff, the court, in its discretion, may reduce the amount of statutory damages to a sum not lesser than five hundred dollars ($500).
Furthermore, if the case is settled in favor of the principal registrant, the court shall always fix the amount of the costs, fees and expenses of the lawsuit in favor of the principal registrant.
History —Dec. 16, 2009, No. 169, § 26; July 12, 2011, No. 124, § 9.