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In-Depth Information
grounds to know that dealing in such subject matter would entail the infringe-
ment of an intellectual property right'. It is difficult to see the justification for
this qualification and how it will operate in practice. Article 50 permits the
grant of provisional measures to prevent an infringement occurring on the
application of a single party, where appropriate. A respondent may at that time
discover that the products which it has purchased are infringing, but it cannot
be enjoined from selling those products under Art 44, since it acquired the
knowledge of infringement after the date of the contract of acquisition. Some
sense may be made of this qualification by virtue of the fact that the respondent
would still be liable to pay damages if it persisted in distributing infringing
products.
(iv) Damages
2.129
Article 45.1 provides that the judicial authorities shall have the authority to
order 'the infringer to pay the rights holder damages adequate to compensate
for the injury … suffered because of an infringement of that person's intellectual
property right by an infringer who knowingly, or with reasonable grounds to
know, engaged in infringing activity'.
Similarly to Art 13(1) of the Enforcement Directive,
56
Art 45.1 provides that
the obligation to pay damages may be imposed only on infringers 'who
knowingly or with reasonable grounds to know' engaged in an infringing
activity.
2.130
The general principles of damages computation in an IPR infringement action
are usefully summarised by Kitchin J in
Ultraframe (UK) Ltd v Eurocell Building
Plastics Ltd & Ano
r,
57
a patent infringement case, but which could equally apply
to the infringement of a GI. However, it should be noted that the practice of
awarding damages in IPR cases varies between countries. For example, the
European Observatory on Counterfeiting and Piracy found varying standards
in EU Member States for the award of damages in IPR cases.
58
It noted that in
some countries right holders often cannot recover in full the compensation
appropriate to an infringement, or the full costs that the right holder has borne
to redress the infringement. Different methods were also found to be used to
calculate lost profits. To deal with variations in damages calculations, it recom-
mended that Member States 'should provide that lump-sum damages, reflect-
ing all negative economic consequences that the right holder has been
2.131
56
Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights.
57
[2006] EWHC 1344 (Pat).
58
European Observatory on Counterfeiting and Piracy, Damages in Intellectual Property Rights, (2010),
accessed at http://ec.europa.eu/internal_market/iprenforcement/docs/damages_en.pdf.
