ECTA, DAY ONE: on particularities and achieving harmonization
As mentioned in the previous post, LexDellmeier is attending the ECTA Annual Meeting. ECTA, short for European Communities Trademark Association is an association promoting the knowledge and professionalism of members and owners alike in the fields of trade marks, designs, copyrights and other Intellectual Property rights, within the European Union. Among many other activities, they organize the Annual Meeting, this time taking place in the beautiful Dubrovnik, a historic gem in the south of the Croatian coast. We have prepared a short overview of each day of the Meeting.
The first workshop of the day was dedicated to giving us a well rounded overview of awarding damages in trademark cases in America and several countries of the EU. Although the general misconception is that it is easier to obtain damages in America, the speaker, Mr. David Donahue, explained it is not all smooth sailing. There are hurdles to cross, and the worst thing is that they vary from coast to coast and from court to court. These uneven decisions are fertile ground for forum shopping. There are multiple types of damages to be obtained: firstly, there is hypothetical royalty, where the jury estimates a higher atonement than the actual damage. This principle is not acknowledged by all American courts. Secondly, there is corrective advertising. The question that had risen was what if the money for advertising was never spent, for the lack of funding or for other reasons, and the Court decided that perspective damages are also possible. The final type of damages, and a very rare one, are treble damages. Those are imposed only when it is possible to prove an intentional infringement. Another problem mentioned was willfulness. As it is hard to prove in IP cases, two fractions have occurred: the majority still holds its ground that intent should be proven. However, a growing minority is rejecting the idea of proving willfulness.
The EU perspective was an array of interpretations and particularities coming from interpretation of the Enforcement Directive.
In the UK, the choice of remedies is between damages and accounts of profits. However, the trial is split, which means the actual amount of damages is determined after the decision on the existence of infringement. This resulted in injunction becoming the most important remedy available. In general, the system has many similarities with the American one. However, the British Courts took an interesting stand on protection of copyrights. They have decided that an author only has rights to the amount covering the economic loss, but nothing for harm of morals, as said in the Henderson case. As they believe, there is no reputation impairment, like in nude photographs publication. This is certainly an intriguing, if not controversial point of view.
In Germany, all existing methods of deciding on damages in practice usually come down to one: in 95% of cases it boils down to the fictional royalties. Those are the sum of net retail turnover and agreed rates, which are usually from 1-5% of turnover, but can amount to a lot more. Additional damages are rarely granted, but can be given on top of other damages. The specialty of German law are the “claims with the chain of distribution”, where you can get damages from every link in the chain of distribution, instead of seeking it from the manufacturer. Another difference is the prescription period of ten years. What it means is that even after the passage of the statute of limitations of three years, you can still get damages due to the other party’s unjust enrichment.
Report by Paul Maier of EUIPO that there are still many differences with conduct and practice of EU countries. An example of this is the estimation of prohibited punitive damages. In Belgium double damages are considered as “over the top”, while in Germany, they are considered as tolerable, as long as they do not reach the amount of three times the damages.
If this panel could be summarized in one sentence, it would be the one stated by Mrs. Annick Mottet Haugaard, the moderator of the panel: “We all have to work on harmonization, on both sides of the ocean.”
The second workshop was organized by EUIPO, and it was about the importance of the HDB, Harmonized Database, which contains more than 70 000 terms from which applicants can select the goods and services for which they seek protection in their trademark applications. The database is growing daily, with more and more local databases joining in. Following this introduction was short demonstrations of TMClass, the tool which helps to classify and search goods and services, and of Goods and services builder, which is a tool easing the process of the filing for the next trademark.
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