LATEST NEWS

China’s Anti-Monopoly enforcement agencies named July 21, 2008
Commission cracks down on collecting societies July 21, 2008
eBay not responsible for policing counterfeits, says US court July 21, 2008
European Commission’s IPR strategy focuses on SMEs July 21, 2008
Musicians welcome plan to extend copyright term in Europe July 21, 2008
Payless ordered to stop using American Eagle brand July 21, 2008
Reform dominates list of 50 most influential people July 21, 2008
Taiwan ends compulsory licensing dispute with Philips July 21, 2008

This article is FREE access as part of MIP Week, a weekly email newsletter written by the editors of Managing Intellectual Property magazine. Take a two week trial to MIP and find many more related articles.

Focus on business issues when seeking monetary relief

James Nurton, Berlin

Trademark owners seeking monetary relief in infringement cases need to weigh up carefully the business issues, as well as the legal arguments. That was the message from yesterday’s session entitled Successfully Managing Monetary Claims in Infringement Cases, which included an animated discussion in a packed meeting room.

Jacqueline Leimer of Kraft Foods said that companies exert a lot of effort defending themselves if they are sued, and should put in similar effort “at the front end” when seeking monetary rewards.

But she also voiced the concern, which was echoed by comments from the floor, that seeking monetary rewards may involve tough questions for corporations.

These include: are you willing to make available your own confidential sales and profits information, are you prepared to admit the harm that has been done to your mark and are you ready for the distractions to personnel that will be required? Leimer said: “You need to have this conversation very early with your management.”

Other considerations for in-house counsel include whether there is insurance coverage, whether a reserve should be set up and whether a settlement should be considered.

During the session, Leimer together with Brian M. Daniel of CRA International and John W. Crittenden of Cooley Godward Cronish discussed two hypothetical cases of infringement where monetary relief could potentially be sought.

Crittenden focused on the legal issues, while Daniel discussed auditing and evidence, and provided comprehensive examples of accounting. In a highly interactive discussion, members of the audience also raised points and questions regarding monetary claims in the US as well as other countries including the UK and Germany.

The questions discussed included whether infringement or dilution would be a better basis for seeking monetary relief, the impact of willfulness, forms of damages, what facts should be pursued, what are the relevant facts if intent is a factor and (if the award is based on damages) how damages are measured.

In the second case study, the panelists discussed a hypothetical scenario where a successful US car-themed restaurant was using the same name as a well-known brand of automobile. While acknowledging that “you would have to proceed very carefully in this case,” Daniel described how calculations could be made based on available evidence. “Maybe there isn’t a licensing agreement, but there might be a business transaction,” he said, adding: “You have to ask, ask and ask again.” He also showed how the performance of the restaurant could be benchmarked against other establishments to estimate the impact of the use of the allegedly infringing mark.