Case number: C04375909 (PAC-0070/2013)
Court: The Chamber of Civil Cases of the Supreme Court of the Republic of Latvia
Parties: American company „Hewlett-Packard Development Company, L.P.” v. SIA „RF serviss”
Date: 29 January 2013
IP RIGHT(S) Trade marks
NORMS Arts. 4(6)(1), 27(1), 28(1), 281 Latvian Law on Trade Marks and Indications of Geographical Origin (1999), Art. 2391 Latvian Civil Law, Arts. 197(1), 25017 Latvian Civil Procedure Law.
The claimant brought a claim to the court regarding a trade mark infringement, requesting a final injunction (to forbid the use of the trade mark „LASERJET”), destruction of the infringing goods and an account of the defendant’s profits at the amount of 308,66 LVL (439,18 EUR). The principal question for the Court to answer was whether the claimant is entitled to the defendant’s profits gained as a result of the infringement.
DAMAGES AWARDED -
The case concerns the trade mark owner’s right to request the defendant’s profits gained as a result of the infringement, on the grounds of Article 2391 of the Civil Law.
Article 281 of the Law on Trade Marks and Indications of Geographical Origin (in wording that was effective till 31 December 2015, at the time of the infringement and the litigation, respectively) and Article 25017 of Civil Procedure Law provided for remedies for trade mark infringement cases. These were such monetary remedies as real damages and a reasonable royalty, and moral damages.
The second sentence of Article 281(2) allowed, when calculating the amount of damages, to take into account the profit acquired unfairly by the person who had unlawfully used the trade mark. However, this sentence was applicable to the calculation of the claimant’s loss. The law did not provide for an account of profits as an independent, separate remedy that could be applied in a case where a claimant had not suffered any actual loss.
The claimant had not indicated or proven any actual loss. The claimant thought that he might claim the account of profits according to Article 2391 of the Civil Law which provides for a general reclaim on the grounds of unjust enrichment: he who has suffered loss from unjust enrichment may claim the return of the benefit the other person has gained as enrichment.
The Court decided that Article 2391 of the Civil Law, providing for a general reclaim on the grounds of unjust enrichment, was not applicable, and that the claimant was not entitled to the account of the defendant’s profits on the grounds of this Article. The general reclaim on the grounds of unjust enrichment (Article 2391) is applicable only in situations where there is no other remedy available, specifically provided for this type of infringement by law. The law provides for other remedies for trade mark infringements, and these include monetary remedies. The listing of these remedies in Article 25017 of the Latvian Civil Procedure Law is exhaustive.
Therefore the Court ruled that the claimant might request only those remedies that the legislator had set down in the law specifically for trade mark infringement cases. The Court awarded a permanent injunction and destruction of the infringing goods, but dismissed the claim for the account of profits.
This judgment also reveals the widespread practice in trade mark cases that courts usually give one month, starting from the day the judgment comes into force, to defendants for destruction of the infringing goods. This time-limit is not set by law, but has been found proportional and appropriate by courts.
In this case the Court ruled that claimants might request only those remedies for the infringement of their intellectual property rights that were set down in the law specifically for the trade mark infringement cases. At the time of the infringement and at the time of the litigation the law did not provide for an account of profits as a separate remedy, but there were other remedies (including monetary remedies) for trade mark infringements in the law. Therefore the general reclaim on the grounds of unjust enrichment (Article 2391 of the Civil Law) was not applicable.
Since 1 January 2016 the legislator has amended Article 281 of the Law on Trade Marks and Indications of Geographical Origin. Now Article 281(2)(3) allows trade mark right-owners to claim an account of profits.
The above-mentioned judgment was not appealed to the Court of Cassation regarding the substance and the remedies, and it has entered into force. The judgment was appealed to the Court of Cassation regarding costs relating to the patent attorney’s fees that the Court of Appeal found reimbursable for the winning party (for the claimant). On 30 October 2015 the Civil Department of the Supreme Court of the Republic of Latvia (the Court of Cassation) repealed the part of the judgment regarding the patent attorney’s fees due to the change of the court practice (see the summary of the case No C04311409 (SKC-0175/2014)).