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The Guide to Damages in International Arbitration

Damages in Intellectual Property Arbitrations

Introduction

The party autonomy that is an especial feature of arbitration provides the parties and the tribunal with the freedom to determine the approach to be adopted to the issue of damages[2] in an intellectual property dispute. This contrasts with the general approach in litigation, in which the court must generally apply the law applicable to the contract in issue or the law or laws that apply to the various intellectual property rights in issue. The flexibility afforded to parties in arbitration provides an opportunity in international intellectual property disputes by allowing the parties in a submission agreement or in an arbitration clause to tailor the approach to be adopted by the tribunal in assessing damages by, for example, providing for a single applicable law for such assessment in place of many, providing an option to recover the defendant’s profits as an alternative to the damage suffered by the rights holder, or providing that triple damages not be awarded. But it also provides a challenge in those very types of intellectual property disputes that are particularly suited to arbitration – the multi-jurisdictional infringement disputes where, on the face of matters, and absent guidance in the submission agreement, damages fall to be determined by reference to the different applicable laws that apply to intellectual property in different countries, an approach that risks unnecessarily complicating the assessment of damages.

Such issues of applicable law are not a problem with a dispute that relates only to intellectual property in one country – the natural approach in such a case is to apply the law of that country, although there is nothing to stop the parties from taking the unlikely course of specifying another law. Similarly, disputes that arise under an arbitration clause in an intellectual property licence or other agreement, even where the territory of the licence includes many countries, present less of a challenge from this perspective than multi-jurisdictional infringement disputes that are the subject of a submission agreement, as the applicable law under which damages are most naturally assessed in the former case will generally be the proper law of the agreement itself.

There is a need for parties and for tribunals in international arbitrations to be better informed of the variety of approaches to damages in intellectual property disputes that different jurisdictions adopt. This allows the identification of areas of similarity and of difference, and so will allow parties to tailor the best approach to the assessment of damages, especially where the tribunal faces a situation that does not compel one single approach. Given the vast amount of scholarship and case law that already exists on the US approach to the issue of damages for the infringement of intellectual property rights this chapter seeks in a small way to redress the balance by outlining, at a general level, the different approaches to the assessment of such damages at an international level and under some of the different legal systems in Europe.[3] This chapter will conclude with observations about certain approaches to the assessment of damages that are adopted in some jurisdictions but which when applied in the context of an arbitral award may give rise to issues of enforceability under the New York Convention.

Although this chapter focuses on matters of substantive law, it should be noted that different jurisdictions will also adopt different procedural approaches to the assessment of damages and that an arbitral tribunal is not constrained as to which such approach it adopts. Arbitral tribunals have broad discretion on issues such as discovery and expert evidence, which if not properly managed can add significant delay and expense in connection with the assessment of damages. In addition, one can identify two other significant procedural issues specific to the assessment of damages.

One is the scope these assessments offer to bifurcate, by which the tribunal[4] can determine damages in a separate stage of proceedings that are only initiated after there has been a determination as to liability. Such bifurcation avoids the need for costly discovery and elaborate expert accounting evidence directed to quantum; if there is no liability this exercise can be avoided. Although in litigation this can result in a delayed recovery in the event that an initial finding of no liability is reversed on appeal, as most arbitration clauses or submission agreements do not provide for an appeal route, this should not be an issue.[5]

A related procedural issue can arise where the applicable law, as discussed below, permits the right holder to choose between an assessment of the damage that it has suffered as a result of the infringement and the benefit that the defendant has secured as a result of it. Both involve some measure of discovery on the part of the infringer, but whereas the former also involves discovery on the part of the rights holder, the latter does not. Accordingly, the courts in some jurisdictions require that the rights holder elect which approach it wants to adopt once liability has been established; however, because the rights holder will have insufficient information on which to base such election, a court can order a limited amount of financial discovery before it does so to enable it to make a more informed choice.[6]

The TRIPS Agreement

An internationally recognised set of minimum standards in intellectual property, applying to most countries of the world, is provided by the TRIPS Agreement of 1994, Article 45 of which addresses the issue of damages:

 

Article 45 – Damages

1. The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has 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.

2. The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees. In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.

 

Thus, TRIPS requires that compensatory damages be available under the applicable laws of Member States and envisages that these are to be the primary financial remedy, but that innocence on the part of the infringer is a permitted defence to such an award, although in practice few legal systems show much sympathy to innocent infringers.

It also envisages that as an alternative to compensatory damages, the courts may order the recovery of the infringer’s profits or payment of pre-established damages, even where there is innocent infringement. One assumes that these two approaches are intended, where they are both available, to be alternatives in any one case. However, TRIPS does not mandate either of them, and just as the remedy of an ‘account of profits,’ as it is referred to in English law, is not available in all countries,[7] neither is that of the award of pre-established damages, such as ‘statutory’ damages, a form of financial relief that is sometimes encountered with copyright infringement.[8]

 

European approaches to assessing damages

Although national jurisdictions in Europe have widely differing approaches to, and traditions of, assessing monetary compensation for intellectual property infringement,[9] a basis for harmonisation now exists and is starting to emerge within the EU by virtue of Article 13 of Directive 2004/48/EC on the enforcement of intellectual property rights,[10] and the interpretations now starting to be placed on this, by national courts in Europe and the Court of Justice of the EU. Article 13 provides:

 

(1) Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the right holder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.

When the judicial authorities set the damages:

(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement; or

(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.

(2) Where the infringer did not knowingly, or with reasonable grounds know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.

 

This provision, representing as it does a legislative compromise, and couched as much of it is in permissive, rather than prescriptive, terminology cannot be said to be entirely clear as to the relationship between these various bases of assessment. In particular, as discussed below, presenting ‘unfair profits made by the infringer’ as a type of damage suffered by the rights holder is a potential source of confusion as to whether such ‘unfair profits’ should be calculated wholly without reference to the actual damage so suffered. Unfortunately, the corresponding Recital 26 does little to assist except to make it clear, as it does in its final sentence, that the Article provides no mandate for damages (in the general sense), however assessed, to be punitive:

 

With a view to compensating for the prejudice suffered as a result of an infringement committed by an infringer who engaged in an activity in the knowledge, or with reasonable grounds for knowing, that it would give rise to such an infringement, the amount of damages awarded to the right holder should take account of all appropriate aspects, such as loss of earnings incurred by the right holder, or unfair profits made by the infringer and, where appropriate, any moral prejudice caused to the right holder.

As an alternative, for example where it would be difficult to determine the amount of the actual prejudice suffered, the amount of the damages might be derived from elements such as the royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.

The aim is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion while taking account of the expenses incurred by the right holder, such as the costs of identification and research.

 

Thus Article 13(1) establishes the following four bases for assessing damages where the infringer knew, or ought to have known, that it was infringing:

 

at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question ...

the negative economic consequences, including lost profits, which the injured party has suffered ...

any unfair profits made by the infringer ...

in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement.[11]

 

If Member States choose also to render innocent infringers liable for damages, Article 13(2) permits them to provide for the ‘recovery of profits’, which can only mean the same as ‘any unfair profits made by the infringer’ or, as an alternative, ‘the payment of damages, which may be pre-established.’[12] The first three of these bases of assessment are met in most legal systems in one context or another, and are discussed further below.

 

‘At least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question’

If the rights holder does not itself exploit an intellectual property right at all, or does not exploit it other than by licensing, there is no logical basis on which it can claim a loss of manufacturing or other profits from exploitation of such intellectual property and so, unless it can claim an account of the infringer’s profits or pre-established damages, it is limited to recovering royalties.[13] Even a rights holder that does use intellectual property to protect its own sales but that is infringed may not be able to show that, but for the infringement, it would have captured all of the infringer’s sales, leaving it to recover royalties on those that it could not have captured. Although unpaid royalties can be seen as a form of lost profit under Article 13(1)(a) for an entity that licenses out its patents, royalties are expressly treated as an alternative, appropriate for innocent infringers, under Article 13(1)(b).

Much has been written and many courts have opined on how to determine an appropriate royalty rate in any given case.[14] In Europe, the primary approach of the English and German courts has been to use the rates set out in comparable licences, to the extent that these exist and can meaningfully be compared, as a starting point for such determination. Of these the German courts have adopted the more generous approach, often applying an uplift of up to 100 per cent on a case-by-case basis to the royalty rate found in comparable licences to reflect the fact that most real life negotiations of royalty rates, unlike those notional negotiations envisaged by the courts after a finding of liability, concern rights that have not yet been held to be either valid or infringed by the activity in question. Such an ‘infringer surcharge’ should, however, be distinguished from a specific ‘infringer supplement’ applied on a flat-rate basis in every case, which would probably constitute a penalty.[15] English courts also recognise as an alternative where there is no satisfactory comparable licence, the ‘profits available’ approach, involving an assessment of the profits that would be available to the licensee, absent a licence, and apportioning them between the licensor and the licensee.[16]

‘The negative economic consequences, including lost profits, which the injured party has suffered’

A convenient, and it is suggested uncontroversial, set of principles for assessing the lost profits suffered by a rights holder that exploits an intellectual property right that has been found to have been infringed were set out in Ultraframe (UK) Ltd v. Eurocell Building Products Ltd,[17] a decision of the English Patents Court:

 

(i)  Damages are compensatory. The general rule is that the measure of damages is to be, as far as possible, that sum of money that will put the claimant in the same position as he would have been in if he had not sustained the wrong.

(ii) The claimant can recover loss which was (i) foreseeable, (ii) caused by the wrong, and (iii) not excluded from recovery by public or social policy. It is not enough that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss.

(iii)     The burden of proof rests on the claimant. Damages are to be assessed liberally. But the object is to compensate the claimant and not to punish the defendant.

(iv) It is irrelevant that the defendant could have competed lawfully.

(v) Where a claimant has exploited his patent by manufacture and sale he can claim (a) lost profit on sales by the defendant that he would have made otherwise; (b) lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price; and (c) a reasonable royalty on sales by the defendant which he would not have made.

(vi)     As to lost sales, the court should form a general view as to what proportion of the defendant’s sales the claimant would have made.

(vii) The assessment of damages for lost profits should take into account the fact that the lost sales are of ‘extra production’ and that only certain specific extra costs (marginal costs) have been incurred in making the additional sales. Nevertheless, in practice costs go up and so it may be appropriate to temper the approach somewhat in making the assessment.

(viii) The reasonable royalty is to be assessed as the royalty that a willing licensor and a willing licensee would have agreed. Where there are truly comparable licences in the relevant field these are the most useful guidance for the court as to the reasonable royalty. Another approach is the profits available approach. This involves an assessment of the profits that would be available to the licensee, absent a licence, and apportioning them between the licensor and the licensee.

(ix)     Where damages are difficult to assess with precision, the court should make the best estimate it can, having regard to all the circumstances of the case and dealing with the matter broadly, with common sense and fairness.

 

The application of the first two of these principles has allowed a patentee to recover damages that exceed its turnover in the articles that actually infringe, by taking account of foreseeable consequences such as loss of sales of spare parts and of servicing contracts, even after patent expiry.[18] The sixth principle is especially applicable in the not uncommon situation of a market in which there are other competitors, when an assessment of the patentee’s sales prospects absent the infringement has to be made.[19]

 

‘Unfair profits made by the infringer’

As already observed, the obscure drafting of Article 13 of the enforcement Directive invites the question of what, if any, relationship exists between the lost profits that the injured party has suffered and the ‘unfair profits’ made by the infringer. Thus, although ‘negative economic consequences, including lost profits which the injured party has suffered’ are clearly a type of ‘damages appropriate to the actual prejudice suffered by [the right holder] as a result of the infringement’ it is less easy to see how, as a matter of logic, ‘unfair profits made by the infringer’ can properly be so characterised. Article 13(1)(a) appears to treat both lost profits and ‘unfair profits’ in the same way, while saying nothing about the relationship between them. Are they alternatives, or should they both be taken into account, and if so which one predominates? To conflate the two concepts, as does Article 13(1)(a), and to characterise a remedy for unjust enrichment as another type of damage suffered by the right holder, rather than as a separate and alternative basis for securing recompense from the infringer, is a recipe for confusion, as has indeed proved to be the case in practice.[20] Thus, in its 2010 review of the national implementation of the enforcement Directive,[21] the Commission commented in the Report that accompanied the Staff Working Paper that:

 

The main aim of awarding damages is to place the right holders in the same situation as they would have been in, in the absence of the infringement. Nowadays, however, infringers’ profits (unjust enrichment) often appear to be substantially higher than the actual damage incurred by the right holder. In such cases, it could be considered whether the courts should have the power to grant damages commensurate with the infringer’s unjust enrichment, even if they exceed the actual damage incurred by the right holder. Equally, there could be a case for making greater use of the possibility to award damages for other economic consequences and moral damages.

 

The Commission in its Staff Working Document recognised that the recovery of profits unlawfully made by an infringer was a new concept in many EU Member States and that in this respect Article 13 was being implemented in a variety of different ways, some of which effectively capped such an assessment at the level of damage suffered by the rightholder, which would render any assessment of the profits made by the infringer pointless. However, even without involving the Court of Justice, national courts of different EU Member States have moved towards accepting that these two bases for assessment should be regarded as alternatives, with neither having any bearing on the other.

Such approach has been adopted by the English and German courts (which have long been able to provide for recovery on this basis) in assessing the profits to be recovered from those who infringe trademarks by selling repackaged goods parallel imported from elsewhere in the EU without complying with the requirements for so doing as established by the Court of Justice.[22] The English Court of Appeal,[23] reversing the judge at first instance, but consistent with a decision of the German Federal Supreme Court in a similar case,[24] held that the damage caused to the trademark proprietor by the infringement had no bearing on a recovery based on determining the infringer’s profits. In France, a decision of the Paris Court of Appeal in 1963 having excluded the possibility of claiming the profits of a patent infringer,[25] the law was then changed expressly to permit it as a result of the enforcement Directive.[26] However, there was controversy as to quite how the profits made by the infringer should be determined, and whether or not the loss actually suffered by the infringer was of any relevance in making such assessment. Recent cases have, however, shown the French courts, when assessing the level of financial recovery on the basis of the profits of the infringer, doing so without any reference to the actual loss suffered by the patentee.[27]

As recovering the infringer’s profits becomes a more popular approach, the courts are starting to clarify some of the issues that it raises, such as how to apportion profits in patent cases where the infringing process is part of a larger one[28] or the infringing goods do not correspond to the inventive concept underlying the patent that has been held to be infringed,[29] and the extent to which the infringer’s overheads may be deducted.[30]

Constraints on enforcement of certain types of award as penalties

As discussed above, one important advantage of arbitrating international intellectual property disputes is that the parties can specify in their arbitration agreement a particular approach to the calculation of damages. Whatever approach the arbitral tribunal takes to the assessment of damages it should be mindful of the issue of enforceability under Article V(2)(b) of the New York Convention, under which enforcement of an arbitral award can be refused if the recognition or enforcement of the award would be contrary to the public policy of the country in which enforcement is sought. There is thus a concern that the enforcement of an award that can be characterised as a penalty, for example, because it is for pre-established, or ‘statutory’, damages, out of all proportion to the scale of the infringement, or it has been enhanced on grounds of ‘wilful’ infringement, may not be enforced in a country that does not allow for penal awards of damages, even if the award is in accordance with the applicable law as chosen by the parties. While such a concern is real and should be addressed, one should perhaps not overstate it, as in practice, certain jurisdictions that have a ‘rule’ against penalties have not necessarily, at least in relation to contractual penalties, been prepared to characterise it as a rule that is so fundamental as to constitute ‘public policy’ for the purposes of Article V(2)(b) of the New York Convention.[31]

Notes

  1. Trevor Cook is a partner at Wilmer Cutler Pickering Hale and Dorr LLP.
  2. ‘Damages’ in this chapter is meant to include any type of financial award received by the rights holder, other than that of legal costs, and so would include not only damage as suffered by the rights holder but also the profits secured by the infringer, where the law applicable to such assessment provides for their disgorgement
  3. For a thorough comparative treatment of damages for patent infringement see Thomas F. Cotter - Comparative Patent Remedies: A Legal and Economic Analysis (Oxford University Press 2013), which is supplemented by entries on the Comparative Patent Remedies blog at http://comparativepatentremedies.blogspot.com/.
  4. Some national courts also take this approach. Both English and German courts bifurcate patent infringement disputes as between liability and quantum. The draft rules of procedure of the EU Unified Patent Court also envisage that assessing the amount of damages awarded to the successful party may be the subject of separate proceedings.
  5. Indeed, in those jurisdictions which bifurcate the two, it is not uncommon for the parties, once liability is established, and either because what really mattered commercially was an injunction, or recognising the costs involved with a determination as to quantum, to settle this by negotiation, resulting in less reported case law on such determinations.
  6. See Island Records v. Tring International [1995] FSR 560 (English High Court).
  7. Although US law in general also allows recovery on an unjust enrichment basis in cases of infringement of intellectual property rights, it precludes this for infringement of utility patents (but not design patents, i.e., registered designs from a European perspective) by virtue of legislation in 1946 and 1952, the effect of which was confirmed by the US Supreme Court in Aro Mfg C v. Convertible Top Replacement Co 377 US 476, 507. This has been criticised – see, for example, Roberts, C L; The Case for Restitution and Unjust Enrichment Remedies in Patent Law, ([2010] Lewis & Clerk Law Review Vol. 14:12, pp 101-132).  
  8. Samuelson, P, Hill, P, & Wheatland, T; Statutory Damages: A Rarity in Copyright Laws Internationally, But For How Long? ([2013] 60 J Copyright Soc’y U.S.A.), observing that although the USA provides for statutory damages for copyright infringement, Australia, France, Germany, the Netherlands and the UK do not. Statutory damages may, however, sometimes result in a disproportionate level of damages award which may, in the context of international arbitration, expose an award to challenge as a penalty.
  9. See, for example, Table 1 at p 667 of Graham, SJH, & Van Zeebroeck, N.: Comparing Patent Litigation Across Europe: A First Look; ([2014] 17 Stan Tech L Rev 655). It should be noted that such variability, to a degree, is also a consequence of the different approaches that such jurisdictions take to the issue of discovery.
  10. Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (OJ L195 2.6.2004 p.16) (replacing by way of corrigendum the version published in OJ L 157 30.04.2004) and Statement by the Commission concerning Article 2 of Directive 2004/48/EC (OJ L94 13.04.2005 p. 37). Article 68 of the Agreement on a Unified Patent Court (OJ C 175, 20.6.2013 p.1) is in similar terms.
  11. In Case C-99/15 Christian Liffers/Producciones Mandarina SL et Gestevisión Telecinco SA (EU Court of Justice 17 March 2016), a copyright case, the Court held that claiming the amount of royalties or fees that would have been due if the infringer had requested authorisation to use the intellectual property right in question did not preclude the right holder from also claiming compensation for ‘moral prejudice’, a concept that appears to be popular in Spain, where it is also applied to patent cases.
  12. See footnote 8, supra, and associated text.
  13. This is why it is common in much infringement litigation for a rights holder to join as a co-plaintiff an exclusive licensee that does exploit the right in issue.
  14. The US approach established in Georgia-Pacific Corp v. United States Plywood Corp, 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970), modified and aff’d, 446 F.2d 295 (2d Cir. 1971) is well known internationally. However, it has been observed that ‘The principal legal framework for determining a reasonable royalty – the Georgia-Pacific list of fifteen factors, including a hypothetical negotiation test – has been widely criticized as ambiguous, unworkable, inherently contradictory, and circular.’ in Graham, S, Menell, P, Shapiro, C, and Simcoe, T; Final Report of the Berkeley Center for Law & Technology Patent Damages Workshop 15 August 2016; (Texas Intellectual Property Law Journal, Forthcoming. Available at SSRN: http://ssrn.com/abstract=2823658).
  15. See Case C-481/14 Jørn Hansson v. Jungpflanzen Grünewald GmbH (EU Court of Justice 9 June 2016), and also the decision of the referring Düsseldorf Appeal Court, concerning the infringement of a Community plant variety right, an intellectual property right which is established under Regulation (EC) 2100/94 of 27 July 1994 on Community plant variety rights, Article 94 of which provides for ‘reasonable compensation’ as a financial remedy for infringement. Although the enforcement Directive applies also to this right and is discussed to an extent in the body of its judgment, the conclusions of the Court of Justice are expressed only in terms of the Regulation, as to which it concludes ‘that article [94] cannot serve as a basis either for the imposition of a flat-rate “infringer supplement” or, specifically, for the restitution of the profits and gains made by the infringer’.
  16. See, for example, Ultraframe (UK) Ltd v. Eurocell Building Products Ltd [2006] EWHC 1344 (English Patents Court) at [47], point (viii), quoted below. As the licensee bears the greater risk such apportionment should favour it, which has led to what has been called the ‘25 per cent rule’ to describe the licensor’s share - see Goldscheider, R, Jarosz, J and Mulhern, C; Use of the 25 per cent Rule in Valuing IP ([2002] Les Nouvelles, page 123), testing its factual underpinnings by reference to actual royalty rate data. See also KPMG Profitability and Royalty Rates Across Industries: Some Preliminary Evidence [2012], which concludes that reported royalty rates ‘tend to fall between 25% of gross margins and 25% of operating margins’. In US litigation the use of the ‘25 per cent rule of thumb’ was criticised in Uniloc USA Inc and Uniloc Singapore Private Ltd v. Microsoft Corp (Federal Circuit, 4 January 2011) as ‘a fundamentally flawed tool’ because it did not differentiate between different industries, technologies, or parties, but rather assumed the same profit split regardless of the size of the patent portfolio in question, or the value of the patented technology, but see Binder, C and Nestler, A; Valuation Of Intangibles And Trademarks - A Rehabilitation Of The Profit-Split Method After Uniloc ([2015] Les Nouvelles, page 203).
  17. Ultraframe (UK) Ltd v. Eurocell Building Products Ltd [2006] EWHC 1344 at [47] (English Patents Court).
  18. Gerber v. Lectra [1995] RPC 383 (English Patents Court); [1997] RPC 443 (English Court of Appeal).  
  19. As in Fabio Perini v. LPC [2012] EWHC 911 (English Patents Court). Here the patentee had a 70 per cent market share that was coming under attack, and its loss of profit was assessed on the basis that it had a 65 per cent chance of selling a machine at €3,824 million to practise the patented process, plus a 65 per cent chance of receiving income for ancillaries and aftersales, and a 25 per cent chance of selling a more speculative machine at €2,157 million, plus a 65 per cent chance of aftersales.
  20. For a fuller discussion of this issue see Cook, T, Making sense of Article 13 of the Enforcement Directive: Monetary compensation for the infringement of intellectual property rights; in Torremans, P, (Ed) – Research Handbook on Cross-border Enforcement of Intellectual Property (Edward Elgar 2014) and Johnson, P, ‘Damages’ in European law and the traditional accounts of profit (Queen Mary Journal of Intellectual Property, Vol. 3 No. 4, pp. 296–306).
  21. Commission Report COM (2010) 779 final 22.12.2010 and Commission Staff Working Document SEC (2010) 1589 final 22.12.2010.
  22. As established in Case C-348/08 Boehringer Ingelheim KG and anr v. Swingward Ltd (EU Court of Justice 26 April 2007).
  23. Hollister Incorporated v. Medik Ostomy Supplies [2011] EWPCC 40, [2012] EWCA 1419. In so holding the English Court of Appeal, while observing that the scope of Article 13(1) of the enforcement Directive was ‘not entirely clear’ observed: … ‘the Community legislature may well have used the term ‘damages’ in a broad sense to include both reimbursement of the right holder’s lost profits and the return of profits made by the infringer, and that Member States must, through their judicial authorities, provide a right holder with a remedy against a defendant who has knowingly, or with reasonable grounds to know, engaged in an infringing activity, which remedy is appropriate to the prejudice suffered by the right holder and takes account of all relevant circumstances such as the profits the right holder has lost and the profits the infringer has made. Certainly I do not understand Article 13 to preclude the award of an account of the profits made by the infringer in such a case. Nor do I understand it to require a court undertaking an account of the profits made by the infringer to adjust that account by reference to the profits lost by the right holder.’
  24. Case IZR 87/07 Zoladex (Bundesgerichsthof 29 July 2009).
  25. Paris, 4th chamber, 22 February 1963, Ann. P.I 1963, p. 377; TGI Seine, 3rd chamber February 1964, JCP Ed. G, 1965, 14334.
  26. Article L 615-7 of the French Intellectual Property Code as amended by Act No 2007-1544 of 29 October 2007.
  27. Colmar Court of Appeal, 1st civil chamber, 20 September 2011, Docket No. 10/02039, Jurisdata No. 2011-029869; PIBD 2012, No. 953, III, 6; Propr. industr., 2012. comm 11; Paris Court of Appeal 5th Division, 1st chamber, 7 November 2012 (Quest Technologies v. SARL Distrisud).
  28. Celanese International Corp v. BP Chemicals Ltd [1999] RPC 203 (English Patents Court).
  29. Design & Display Limited v. OOO Abbott & Anr [2014] EWHC 2924 (IPEC), [2016] EWCA Civ 95 (English Court of Appeal).
  30. Hollister Incorporated v. Medik Ostomy Supplies [2011] EWPCC 40, [2012] EWCA 1419 (English Court of Appeal); Design & Display Limited v. OOO Abbott & Anr [2014] EWHC 2924 (IPEC), [2016] EWCA Civ 95 (English Court of Appeal), in both of which the English Court of Appeal extensively cited Dart Industries Inc v. Decor Corp Pty Ltd, [1994] FSR 567 (High Court of Australia).
  31. Amaltal Corporation Ltd v. Maruha (NZ) Corporation Ltd (New Zealand Court of Appeal, 11 March 2004), applied in Pencil Hill Limited v. US Citta di Palermo S.p.A. (English High Court, 19 January 2016).

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