A hotel in a skiing area known for its bar featuring scantily-clad dancing girls was found to have an infringing trade mark. The lower courts issued an injunction in a first partial judgment. A further partial judgment was made requesting accounts of the turnover earned in connection with the running of the bar and all advertisements made for it. Accounts are the basis for all claims of compensation and damages calculations. In this case, the question was which turnovers should be included. On further appeal to the Austrian Supreme Court, the Court upheld the lower courts' judgments. It ruled on this topic as follows.
One defence was that the order goes too far as it covers the whole year and the bar is only open during the skiing season (five months per year) and closed for the rest of the year. This defence is not applicable when the principal duty is to produce complete accounts. This defence was related to the question of whether laying out the accounts is correct, not the principal duty of a complete disclosure of the full time.
The main defence was that the turnover of the hotel itself should not be included because there is free entrance to the bar as a sales promotion and this is only one of seventeen amenities which are part of an inclusive service for the guests of the hotel. Free entrance to the bar for the customers is therefore not decisive for customers choosing the hotel. However, this defence did not convince the Supreme Court either. It is evident that the infringing trade mark had been used for the promotion of the hotel. Since it cannot be presumed that a business advertises ineffectively and uselessly this defence was refused.
A further defence was that the separate turnover of the independent girls as covered by the judgment cannot practically be known since the owner has no method of extracting any reliable figures or proof from the dancers. The Supreme Court replied that the level of difficulty is irrelevant here. The rendering of accounts in the present case is a right of the infringed, guaranteed expressly by Trademark Law without taking into account substantial difficulties in gathering reliable data or how reasonable it is to do so. Therefore, the infringer also has to make a sincere effort to ascertain the turnover of the independent dancers. They are part of the business of the bar and their turnover has to be calculated.
This decision (4Ob 130/18y) shows that once infringement is clear, the infringer cannot escape full rendering of accounts for all aspects of the infringement. All that can be done is to discuss how the consideration or damages will be calculated and which parts of the accounts have to be considered and to what extent.
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