Case number: C04310408 (C-0439-11/26)
Court: The Collegium of Civil Cases of Riga Regional Court
Parties: American company „Wrangler Apparel Corporation” v. Chinese company „Jindi Tie Tong”, Kazakhstan’s company TOO „Hozu-Avto KZ” and American company „Font Media Group LLC”
Date: 31 January 2011
IP RIGHT(S) Trade marks
Arts. 4(6), 4(7), 4(8), 27(1) Latvian Law on Trade Marks and Indications of Geographical Origin (1999), Art. 25017 Latvian Civil Procedure Law, Arts. 11(2), 17-23 CMR Convention, Art. 9 R 40/94.
The claimant owns registered and well-known trade marks „Wrangler” for clothing, footwear and headgear. The Latvian customs, during inspection of three trucks driven by the Kazakhstan’s company TOO „Hozu-Avto KZ”, had found counterfeit goods there – men’s shirts, labelled with word signs „Wrenglar”, „Wrengeler” un „Rengler”. The Kazakhstan’s company TOO „Hozu-Avto KZ” was the carrier. The Chinese company „Jindi Tie Tong” was the sender of the goods (the consignor), and the American company „Font Media Group LLC” in Oregon – the recipient of the goods (the consignee).
The principal question for the Court to answer was whether a carrier was liable for such infringement and whether final remedies might be applied against him.
DAMAGES AWARDED -
The case concerns the issue of guilt and liability of a carrier for a trade mark infringement and the issue of remedies applicable against a carrier.
The Court found likelihood of confusion of the signs ,,Wrenglar”, ,,Wrengeler” un ,,Rengler” with the claimant’s trade marks ,,Wrangler”. The Court also stated that the manufacturer’s intention to imitate (to counterfeit) the claimant’s goods was evident. Therefore the Chinese company „Jindi Tie Tong” as the manufacturer of the counterfeit goods and the American company „Font Media Group LLC” as the buyer of the counterfeit goods had infringed the claimant’s exclusive rights.
Regarding the carrier – the Kazakhstan’s company TOO „Hozu-Avto KZ” – the Court referred to 1965 Convention on the Contract for the International Carriage of Goods by Road (CMR). According to Articles 17 to 23 of the CMR Convention the carrier is liable only for the total or partial loss of the goods and for damage thereto, and for a delay in delivery. According to Article 11(2) of the CMR Convention the carrier is not under any duty to enquire into either the accuracy or the adequacy of documents and information regarding the goods. The Court was of an opinion that the carrier does not have a duty to know all trade marks and to solve complicated questions of law and fact regarding the likelihood of confusion or the identity of signs and trade marks. Therefore the carrier in this case is not liable for the above-mentioned trade mark infringement done by the rest two defendants.
However, the lack of liability does not exclude the application of some remedies in intellectual property infringement cases. Article 25017(1) authorises the Court to issue a final injunction, inter alia, as a prohibition to provide services for illegal activities with intellectual property objects, against persons whose services are used in order to infringe the intellectual property rights, or who make such infringements possible. The Court found that such persons include carriers of goods.
The Court also referred to the Report of Commission of 22 December 2010 on application of the Directive 2004/48/EC on the enforcement of intellectual property rights. According to Section 3.3, an injunction can be issued against an intermediary regardless of the liability of the intermediary.
Therefore the Court issued the permanent injunction against all three defendants, including the carrier. The wording of the injunction provided for, inter alia, the prohibition to use the infringing signs in commercial activities, including import and export of goods, provision or offer of services. However, regarding other remedies the Court held that due to lack of guilt the carrier is not liable for destruction expenses and litigation costs.
In this judgment the Court establishes that a permanent injunction may be issued against an intermediary (in this case – a carrier of goods by road) regardless of its guilt.