Introduction

The Enforcement Directive (Directive 2004/48/EC on the enforcement of intellectual property rights) (“the Directive”) requires Member States of the European Union to amend their national laws in accordance with the principles set out in the Directive, with a view to harmonising the procedural rules and substantive law relating to the enforcement of intellectual property rights in all Member States.

The Directive aims at removing disparities between the systems of the Member States as regards measures, procedures and remedies relating to the enforcement of IP rights, such as measures for preserving evidence, the right to obtain information relating to purchases and sales of infringing goods, provisional and precautionary measures, corrective measures, injunctions, alternative measures, damages, legal costs and publicity measures. Most Member States have implemented changes to their national laws in accordance with the Directive

While it is relatively straightforward for the courts of the Member States to deal with most of the remedies above, the area of damages and legal costs has traditionally been dealt with in different ways by the Courts of the various Member States. There has, naturally, been no consistency in the way in which the various courts have approached the award of damages and legal costs.

Consequently, the ECTA Anti-Counterfeiting Committee, under the Chairmanship of Ignacio D Rivera Elzaburu, decided to conduct a survey on the way in which the courts of Member States have approached and currently deal with the issues of damages and legal costs resulting from trade mark infringement.

Annick Mottet Haugaard compiled a Questionnaire on Monetary Compensation Awarded in Counterfeiting or Trade Mark Infringement Cases. The Questionnaire was directed to correspondents in each Member State. A copy of the Questionnaire is annexed hereto as "Annex I".

We have used the broad term "monetary compensation" (even though the Directive uses the phrase "pecuniary compensation") because:

(a) whereas Article 13 of the Directive is simply headed "Damages", the text of that Article clearly envisages a broad interpretation of "damages", such as negative economic consequences, including "lost profits", "unfair profits" and, in appropriate cases, elements other than economic factors, such as "moral prejudice" or, alternatively, a "lump sum" on the basis of elements such as "royalties or fees" which would have been due if the infringer had requested eg, a licence; and

(b) with regard to legal costs, Article 14 of the Directive provides that Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this.

An extract from the Recitals to the Directive, as far as they relate to damages and costs and Articles 13 and 14, is annexed hereto as “Annex II”.

In some Member States, monetary compensation is available following criminal proceedings. The Questionnaire therefore included a question on criminal sanctions.

Responses to the Questionnaire were varied in length and detail. Consequently, it was decided to summarise each response into no more than two pages and to reduce the questions to the following simplified headings:-

1. Legal basis for compensation.
2. Assessment of damage suffered.
3. Award of the unfair profits made by the Defendant.
4. Commercialisation.
5. Knowledge.
6. Award of costs incurred by the Claimant
7. Punitive damages.
8. Criminal sanctions.
9. Compensation "ex aequo et bono".

The huge task of collating and summarising the responses to the Questionnaire was undertaken by Joe Cohen. The summary responses are found in the following pages and will also be found on the ECTA website. If any member of ECTA would like a copy of the full response from any Member State, please contact the contributor directly.

We are grateful to all the contributors, whose names appear on the next page. Two countries of the EU are missing from this survey and it is hoped that contributions from Ireland and Portugal will be forthcoming soon. Note: Scotland and Northern Ireland are separate jurisdictions, but the substantive trade mark law is the same as that of England & Wales.

This project will continue to be a work-in-progress – until we have a body of case law from the Courts of the individual Member States, built upon the principles laid out in Articles 13 and 14 of the Directive. As and when new cases on monetary compensation for trade mark infringement are heard in each Member State, the respective contributors will be asked to submit a brief note thereof to Sandrine Peters, Legal Co-Ordinator of ECTA.

Ignacio D Rivera Elzaburu Elzaburu ide@elzaburu.es

Annick Mottet Haugaard Lydian Annick.Mottet@lydian.be

Joe Cohen Collyer Bristow joe.cohen@collyerbristow.com