- Published on
Third element: damage
Damage or the possibility of damage must be demonstrated by the claimant. Due to the possibility of damages, the claimant will typically be asking for an interim injunction. When goodwill and deception are proven in a typical case involving a claimant and defendant in the same industry, the court will typically infer damages.
The two primary categories of damage are: (a) loss of earnings, which occurs when customers choose to purchase the infringing goods over the claimant's; and (b) loss of reputation, which occurs when buyers mistakenly believe the infringing product is created by the claimant due to its inferior quality. The claimant may not be successful if the infringement is engaged in another type of business and is unable to demonstrate damages. For instance, the nightclub in Stringfellow and Others v. McCain Foods GB Ltd and Another [1984] RPC 501 was unable to ban the sale of oven chips using the brand name "Stringfellows." The copyright holders of the Wombles novels and television series were unable to ban trash skips from being rented out under the name "Wombles" in the case of Wombles Ltd v. Wombles Skips Ltd [1977] RPC 99. In other instances, though, plaintiffs have been able to demonstrate harm from their inability to enter a new market. The "Marigold" rubber glove maker successfully prevented the use of the name "Marigold" on a toilet tissue (LRC International Ltd and Another v Lilla Edets Sales Co Ltd [1973] RPC 560). Additionally, there may be loss if the claimant's reputation is damaged by the infringer's product. The use in issue may have given rise to the misunderstanding that a well-known nightclub had established an escort service in the case of Annabel's (Berkeley Square) Ltd v. Schock (t/a Annabel's Escort service) [1972] RPC 838.
In Global Projects Management Ltd v. Citigroup Inc [2005] EWHC 2663 (Ch], the judge granted Citigroup summary judgment and was willing to acknowledge that the use of "citigroup.co.uk" by the domain owner had created a risk of emails being sent to uninvited recipients to the point where damage was obvious, even if it could not be measured. The case of Irvine and Others v Talksport Ltd [2003] EWCA Civ 423, [2003] 2 All ER 881 involved renowned race car driver Eddie Irvine. The defendants utilized a photo of him holding a cell phone that they had edited to swap out the cell phone for a radio that said "Talk Radio" and then used the changed image as a flyer for their events. To put it another way, they leveraged him to promote their goods without paying him to do so. The Court of Appeal determined that this constituted passing off and that the normal fee that the claimant would have typically sought was the appropriate measure of damages for a misleading product endorsement.
Damage or the possibility of damage must be demonstrated by the claimant. Due to the possibility of damages, the claimant will typically be asking for an interim injunction. When goodwill and deception are proven in a typical case involving a claimant and defendant in the same industry, the court will typically infer damages.
The two primary categories of damage are: (a) loss of earnings, which occurs when customers choose to purchase the infringing goods over the claimant's; and (b) loss of reputation, which occurs when buyers mistakenly believe the infringing product is created by the claimant due to its inferior quality. The claimant may not be successful if the infringement is engaged in another type of business and is unable to demonstrate damages. For instance, the nightclub in Stringfellow and Others v. McCain Foods GB Ltd and Another [1984] RPC 501 was unable to ban the sale of oven chips using the brand name "Stringfellows." The copyright holders of the Wombles novels and television series were unable to ban trash skips from being rented out under the name "Wombles" in the case of Wombles Ltd v. Wombles Skips Ltd [1977] RPC 99. In other instances, though, plaintiffs have been able to demonstrate harm from their inability to enter a new market. The "Marigold" rubber glove maker successfully prevented the use of the name "Marigold" on a toilet tissue (LRC International Ltd and Another v Lilla Edets Sales Co Ltd [1973] RPC 560). Additionally, there may be loss if the claimant's reputation is damaged by the infringer's product. The use in issue may have given rise to the misunderstanding that a well-known nightclub had established an escort service in the case of Annabel's (Berkeley Square) Ltd v. Schock (t/a Annabel's Escort service) [1972] RPC 838.
In Global Projects Management Ltd v. Citigroup Inc [2005] EWHC 2663 (Ch], the judge granted Citigroup summary judgment and was willing to acknowledge that the use of "citigroup.co.uk" by the domain owner had created a risk of emails being sent to uninvited recipients to the point where damage was obvious, even if it could not be measured. The case of Irvine and Others v Talksport Ltd [2003] EWCA Civ 423, [2003] 2 All ER 881 involved renowned race car driver Eddie Irvine. The defendants utilized a photo of him holding a cell phone that they had edited to swap out the cell phone for a radio that said "Talk Radio" and then used the changed image as a flyer for their events. To put it another way, they leveraged him to promote their goods without paying him to do so. The Court of Appeal determined that this constituted passing off and that the normal fee that the claimant would have typically sought was the appropriate measure of damages for a misleading product endorsement.
0 Comments