Skip to content 
Trade mark infringement is a very serious and stressful situation for man different people. In this post, we will go over Trade mark infringement damages and the user principle.
What is Trade mark infringement
Trademark infringement refers to the unauthorized use of a trademark that is identical or confusingly similar to a registered trademark. A trademark is a distinctive sign, such as a word, phrase, logo, or symbol, used by businesses to distinguish their goods or services from others in the market. Infringement occurs when a third party uses a similar trademark in a way that may cause confusion among consumers or dilute the distinctive character of the original mark.
This can include using a trademark without permission on products, packaging, advertising, or online platforms. Trademark owners have the right to protect their intellectual property and can take legal action against infringers to enforce their exclusive rights and seek remedies such as injunctions, damages, and the destruction of infringing goods.
Trade mark infringement damages – User Principle
The ‘user principle’ is typically used in patent cases to work out damages owed when the Court cannot calculate the profits lost by the patent right owner caused by the infringement of their patent. In trade mark law the usual scenario is that where a trade mark proprietor can show that it licences its respective mark in the course of business they can claim a reasonable licence fee for the use of their trade mark (going off their licensing history) as damages. However, where there has been no history of licensing of the trade mark this option is not available to a proprietor.
Very often the problem in Trade mark infringement damages cases is trying to determine damages. It can be impossible to account for infringers profits where the equitable remedy is opted for and damages can also be very difficult to show especially on a small scale. Not being able to use the ‘user principle’ has made it extremely difficult to determine damages in Trade mark infringement damages cases. Very often a proprietor of a trade mark will issue a claim against an infringer, not for damages, but merely to prevent the infringer from using its mark. When the case arrives at trial damages can be elusive.
In the recent case of 32Red -v- William Hill, the Court the Judge implemented the user principle when assessing damages in trade mark infringement and had William Hill pay 32Red £150,000.00 in damages. It was the Judge’s opinion that had the parties arranged a deal for the licensing of Red32’s trade mark, £150,000.00 is the deal they would have struck for the use of the mark in the manner is was used.
The Judge stated that the user principle should be based on ‘objective’ factors and should not be based on the ‘specific characteristics and circumstances’ of the parties to the claim. So the financial circumstances of the parties are not material… but simply the worth of the use of the mark for the manner the mark was used.
My previous article written on the ‘user principle’ prior to this Red32 case discusses a number of cases showing the Courts reluctance to impliment the ‘user principle’. The article can be found on Lawdit and discusses the following cases:
(1) Dormueil Freres v Feraglow [1990] RPC 449;
(2) Irvine v Talksport [2003] EWCA Civ 423 [2003] FSR 35;
(3) Gerber v Lectra [1995] R.P.C. 383; and
(4) Reed Executive PLC v Reed Business Information Ltd [2004] R.P.C. 40
By Michael Coyle at Lawdit Solicitors.
If you’d like to know more about Trade mark infringement damages please send an email to us quoting the article title and any questions you might have, alternatively, call the office number on 02380 235 979 or send an enquiry through our contact form.
For more on Trade mark infringement damages, please make sure you see some of our related posts below.
References for Trade mark infringement damages
Here are some references for this article related to: Trade mark infringement damages.
- William Hill (Wikipedia.ORG)
- 32Red (Wikipedia.ORG)
Posts related Trade mark infringement damages
Here are some posts related to Trade mark infringement damages. Please browse them below.
- ‘It’s not the same as it was’: Harry Styles launches a lawsuit against online retailers for trademark infringement on fake merchandise.
- Google Nest falls victim to trademark infringement claims
- Taylor Swift sued for trademark infringement on her latest album by a Fantasyland theme park
- Settlement of trademark infringement – Guns N’ Roses vs Guns ‘N’ Rosé
- Settlement of trademark infringement – Guns N’ Roses vs Guns ‘N’ Rosé
- Patagonia accuses Anheuser-Busch Brewery of trademark infringement for using its name and logo to sell beer
- Hello Kitty owner targets counterfeiters in trademark infringement suit
- A win for Christian Louboutin in trademark infringement battle in India
