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27 May 2020AmericasSarah Morgan

Codexis sues rival DNA tech company over TMs

Protein engineering company  Codexis has accused competitor  Codex DNA of trademark infringement through the use of a “virtually identical” mark.

Codexis, in a suit filed on Friday, May 22 at the US District Court for the Northern District of California, claimed that San Diego-based Codex DNA had rebranded from SGI-DNA in April this year and was now marketing products and services under the Codex DNA brand.

“Despite being promptly notified of plaintiff’s senior rights and the likelihood of confusion created by defendant’s unauthorised use of the ‘Codex’ mark, defendant continues to market their products and services under that mark,” alleged the claim.

Codexis owns trademark registrations for ‘Codexis’ and ‘Codex’ while, according to the suit, Codex DNA doesn’t own any trademark registrations or applications for the ‘Codex’ mark or any mark that contains the term “codex”.

When Codexis learnt of the rebranding to Codex DNA—which offers a gene synthesis platform—it sent a letter confirming the existence of its senior rights in the ‘Codexis’ and ‘Codex’ marks, the similarities in the parties’ goods and services, and the resulting likelihood of confusion if Codex DNA moved forward with its rebrand.

“Despite the likelihood of confusion and plaintiff’s clear prior rights in its ‘Codexis’ and ‘Codex’ marks, defendant moved forward with its use of the infringing ‘Codex’ mark and has refused to cease its infringing activities despite plaintiff’s repeated requests,” added the suit.

Codexis added: “In short, while on notice of plaintiff’s longstanding and senior rights in its ‘Codexis’ and ‘Codex’ marks, defendant adopted a virtually identical mark and is using it to sell similar goods and services in the same or related fields.”

Codexis has asked the court to grant an injunction which would stop Codex DNA from using the ‘Codex’ mark and transfer all domain names and social media accounts that include the term “codex”.

The plaintiff has also asked the court to ensure the destruction of the allegedly infringing products, to find infringement and to award damages.

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