West Virginia Code 47-2-13 – Injury to business reputation; dilution
(a) The owner of a mark which is famous in this state shall be entitled, subject to the principles of equity, to an injunction against another's use of a mark, commencing after the owner's mark becomes famous, which causes dilution of the distinctive quality of the owner's mark, and to obtain such other relief as is provided in this section. In determining whether a mark is famous, a court may consider factors such as, but not limited to:
Terms Used In West Virginia Code 47-2-13
- dilution: means the lessening of the capacity of registrant's mark to identify and distinguish goods or services, regardless of the presence or absence of: (A) Competition between the parties. See West Virginia Code 47-2-1
- Injunction: An order of the court prohibiting (or compelling) the performance of a specific act to prevent irreparable damage or injury.
- mark: includes any trademark or service mark, entitled to registration under this article whether registered or not. See West Virginia Code 47-2-1
- State: when applied to a part of the United States and not restricted by the context, includes the District of Columbia and the several territories, and the words "United States" also include the said district and territories. See West Virginia Code 2-2-10
- use: means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. See West Virginia Code 47-2-1
(1) The degree of inherent or acquired distinctiveness of the mark in this state;
(2) The duration and extent of use of the mark in connection with the goods and services;
(3) The duration and extent of advertising and publicity of the mark in this state;
(4) The geographical extent of the trading area in which the mark is used;
(5) The channels of trade for the goods or services with which the owner's mark is used;
(6) The degree of recognition of the owner's mark in its and in the other's trading areas and channels of trade in this state; and
(7) The nature and extent of use of the same or similar mark by third parties.
(b) The owner shall be entitled only to injunctive relief in this state in an action brought under this section, unless the subsequent user wilfully intended to trade on the owner's reputation or to cause dilution of the owner's mark. If such wilful intent is proven, the owner shall also be entitled to the remedies set forth in this chapter, subject to the discretion of the court and the principles of equity.