In the recent case of National Guild of Removers &
Storers Ltd v Silveria (t/a C S Movers) [2010] EWPCC, the
Patents County Court considered whether damages calculated on a
"user" basis (a measure usually used in patent cases) are
available in trade mark cases. A secondary issue was whether a
given case must involve lost sales in order to be
successful.
In the case in question, the National Guild of Removers &
Storers Ltd (an association representing members of the removals
and storers industry) (the "Guild") brought a claim of
trade mark infringement against four separate defendants, of which
only one was not a member of the Guild. These four claims were then
joined in relation to the issue of damages.
A common measure of damages in trade mark cases is on the basis of
lost sales. However, the Guild had not suffered this kind of loss.
When considering the damages for the acts of infringement, HHJ
Birss QC took into account the rules of membership of the Guild,
which provide for a trade mark licence allowing for members to use
the Guild's trade marks for advertising in trade directories.
Such licences may in certain instances be valid even after
termination of membership, for a fee. The court also took into
account the rulings in landmark cases such as General Tire v
Firestone [1976] RPC 197, Dormueil Freres v Feraglow
[1990] RPC 449 and Irvine v Talksport [2003] EWCA Civ 423
[2003] FSR 35 in order to establish whether such damages are
recoverable in a trade mark and passing off case and, if so, what
factors must be taken into account when assessing the level of such
damages.
As a matter of general principle, use of a mark without permission,
resulting in infringement, is an act capable of damaging the
claimant's property in the mark or the goodwill attached to the
business.
The court ultimately held that there is conceptually no reason why
damages calculated on a "user" basis should not be
available in trade mark cases, as they are in patent cases. The
Guild was entitled to the "lost property" being payment
of the fees the Guild would have charged had the use of the mark
been licensed. Significantly, the issue of lost sales does not have
to be raised in order for such claims to be successful, although
the level of such damages will be determined on the basis of all of
the facts relevant to a given claim.
Please click here for a copy of the ruling in this case:
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The original publication date for this article was 09/12/2010.
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