Community Trademark Infringement: “Monster High”

monster high

 

What are the consequences of infringement of a Community Trademark?

The compensable concepts trademark infringement, are collected primarily in Article 43 of la Trademark Law: Compensation for damages shall comprise:

1. The losses.
2. The loss of profits.
3. The damage caused to the prestige of the brand.
4. The costs of research required for the process.
5. The moral damage.

And when setting compensation, the criteria for quantification are, at the option of the injured:

• The lost profits by the holder or the profits made by the infringer.
• The price would have had to pay for a license.

And it is set as minimum, not even require test 1% of the turnover obtained by the infringer with illicit product.

For illustrative purposes we bring the Judgment of the Provincial Court of Alicante (Community Trademark Court) of 25 September 2014, relapse on name brand "Monster High".

Mattel sues Erjutoys by:

Violation of Community trade marks corresponding to "Monster High" (likelihood of confusion).
Infringement Community model, corresponding to their wrists.
Unfair Competition (acts of confusion, acts of imitation and acts of exploitation of another's reputation Articles 6,11 and 12 relative to 32 the Unfair Competition Law).

And requested when directed to cease importing and marketing the infringing products, withdrawn from the market, destroy and compensation 86.192 euros (plus costs).

The company Erjutoys importing dolls came with the distinctive "Monster Doll".

The Court of First Instance partly estimated demand, declaring that the importation and marketing of dolls named in the application constitute an infringement of the Community trade mark "Monster High" and is committed unfair competition acts of imitation and unfair advantage of the reputation of others. Reduces compensation 28.730 euros.

Erjutoys appeal before the Provincial Court alleging that there is no trademark infringement and unfair competition. Mattel also appeals, requesting that compensation be set at 86.192 euros.

The Provincial Court considers that to fix if trademark infringement by risk of confusion, should take into account criteria for the judgment of the European Court of Justice of 22 June 1999:

1.- The likelihood of confusion is that the public might believe that the goods correspond to the same undertaking or undertakings connected.
2.- The risk must be assessed globally, taking into account all factors.
3.- The most important brands, most distinctive and best known in the market, enjoy greater protection than marks with a less distinctive character.

For Hearing, there is a high degree of similarity, incident on the same product. The word "monster" has special distinctive load, but it is considered that the mark "Monster High" is evident in the toy sector. In summary, It is considered that there likelihood of confusion.

The argument of the defense is rejected provide the 42 Brands extracted from the database of the Office of the class 28 in which the word "monster" that according to the Audiencia, has not been proven if there really is confusion or even if they are all active.

Regarding unfair competition, the criterion of the judgment of first instance is confirmed, stating that there is no contradiction between the dismissal by the infringement of Community designs and estimation of the existence of unfair competition.

Last, on the amount of the compensation is considered appropriate to apply the criterion of Judge instance the lessons of experience to secure the benefit of the offender in the 33.33% on net sales.
Mattel's challenge to raise the amount of compensation to be rejected 86.192 euros, for not having requested and practiced enough proof.

Ultimately, resources are dismissed and the judgment of first instance ruled that confirms the existence of infringement of the CTM.

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