One-minute read
Trademark litigation is costly, and obtaining adequate monetary relief in infringement cases can be tricky. In today’s workshop on assessing damages in trademark cases, practitioners and experts will tackle a series of hypothetical cases and engage members in an interactive session aimed at educating trademark owners and attorneys about the process. The hypothetical cases address trademark dilution and infringement and involve international aspects; the panel will compare the law in Germany, Japan, Mexico and the US. In the US, for example, plaintiffs can choose to recover lost profits and/or the defendant’s earnings from infringement, and there are important issue to consider when making that choice. Getting your strategy right requires careful thought—but the rewards can be counted in the millions of dollars.
“We want to try to demystify the whole issue of damages—or monetary relief, which is broader than damages—in trademark cases,” says John Crittenden of Cooley Godward Kronish, one of the speakers in today’s workshop WM01—The Intersection of Trademark Law and Economics: Successfully Managing Monetary Claims in Infringement Cases. To that end, Crittenden and his fellow panelists have come up with two fictitious cases, which they will review and analyze during the interactive workshop.
Both cases involve the owner of the mark SCHRÖDER, a famous German sports cars brand. In the first case, SCHRÖDER’s owner, Schroeder AG, has discovered that Car Parts Emporium (CPE) has been using its mark inconsistently, causing consumers to mistakenly purchase products that they believed were manufactured, endorsed, or sponsored by SCHRÖDER, when they in fact were not.
In the second case, Schroeder AG has discovered that renowned chef David Schroeder has opened his own chain of restaurants using the mark SCHROEDER’S CHEQUERED FLAG. The restaurants have a motorsports theme, which Schroeder AG alleges is a violation of its trademark rights.
After reviewing each hypothetical situation, the panel will address questions such as whether trademark infringement or trademark dilution is a better cause of action for seeking monetary relief, which forms of damage are relevant to consider and how to measure them.
Damages around the world
The session will also provide an overview of the legal principles governing damages in four key jurisdictions: the US, Germany, Japan and Mexico. “We want to get people thinking about the US in comparison to other countries: how are they different?” says Crittenden. Crittenden points out that in Mexico, for instance, the maximum damages award is fixed at 40% of the sale price of the infringing goods, while “exposure can be tremendous in the US.”
The rule on damages in Germany is similar to that in the US. Plaintiffs may recover their own losses, defendant’s profits or hypothetical license fees and attorney’s fees. The proof that is required is also similar, but in the US, the court can choose to adjust the amount of damages based on its own discretion, while in Germany it cannot.