Argentina: Full compensation for damage in trade mark infringement

IP rights – among which is the right of the trade mark owner– enable the holder to exploit with exclusivity certain intangible assets. Every time a misappropriation or trade mark infringement takes place, the owner of the trade mark that is subject to infringement also suffers damage, due to the simple fact that a third party is using a similar or identical trade mark without their consent.

In this regard, judges must adopt a broad criterion when applying the remedy of damages, even when it is difficult to prove those damages concretely.

Obtaining full compensation for the damage caused will discourage the violation of any IP rights by infringers. When applying these laws, judges should therefore endeavour to facilitate proper damages to a greater extent in cases of infringement.

In that sense, it is worth mentioning the recent decision of Division I of the Federal Court of Appeals in Civil and Commercial Matters in H I v DITOYS SA on Cease of use of Trade mark of August 16 2016 that provides a good example of such facilitation.

In relation to the damages suffered, considering that the defendant made inappropriate use of the plaintiff's trade mark, the first instance judge understood that it was very difficult to accurately prove the loss on the basis of the decrease in the plaintiff's income – because this depended on multiple factors. Thus, he argued that the person that acts improperly has to take the risk of the uncertainty generated by their own action, otherwise there would be a thread of impunity around trade mark infringements.

"Once the existence of infringement has been proven, experience, case-law and doctrine affirm that the trade mark owner suffers damage. Undoubtedly, difficulties are encountered when it comes to proving the damage caused in the field of industrial property. Thus, it would be correct to start from presumed damages."

In its decision, the Court confirmed that the remedy of damages is according to law and also sustained the plaintiff's request and increased significantly the amount for damage compensation.

Daniel R Zuccherino

Obligado & Cia

Paraguay 610, 17th Floor

C1057AAH, Buenos Aires, Argentina

Tel: +54 11 4114 1100

Fax: +54 11 4311 5675

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