Assessment of damages for an infringement of intellectual property rights in the light of CJEU case law

Studia Prawa Prywatnego | 02/2017
Agnieszka Sztoldman
Assessment of damages for an infringement of intellectual property rights in the light of CJEU case law

Damages for an infringement of intellectual property rights remain a vital issue in the field of intellectual property practice and theory. In litigation concerning an infringement of intellectual property rights, the holders of rights commonly request monetary relief. Directive 2004/48/EC (the Enforcement Directive) introduced into the Polish legal system a specific regime with respect to compensation claims. The Enforcement Directive provides for a ‘hybrid solution’ – traditional elements of responsibility for damages are combined with new ones, specific for the enforcement of intellectual property rights, which are direct rights effective erga omnes. Although the Enforcement Directive has no direct impact on the national laws, it serves as a common guidance for compensation for damage, and thereby Polish courts should apply guidelines derived from recent EU case law developments1. In particular, it sets out that Member States must provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this directive, and that those measures, procedures and remedies must also be effective, proportionate and dissuasive (see: Art. 3)2. However, it has been observed that the Enforcement Directive only really led to harmonisation at the core law concerning sanctions. In some jurisdictions, the assessment of damages is based on general concepts of non-contractual liability (torts), or general common law principles relevant to damages. In other jurisdictions, there are specific provisions relating to damages for intellectual property rights infringements. In general, Polish law provides for three calculation methods for damages in the event of a culpable infringement: (i) compensation of damages actually suffered, (ii) calculation of the damages abstractly and payment of an appropriate licence fee; (iii) calculation of the profit that the infringer gained from the infringing act. The possibility to choose between three alternative calculation methods is a specific feature of intellectual property law3. In spite of the implementation of the Enforcement Directive in Member States, case law related to the assessment of damages and the quantification of monetary relief varies between Member States as a result of the minimum harmonisation standard, and thereby claims for damages are occasionally fixed in accordance with principles and case law in the Member State in which the court hearing the case sits4. Recently, the Court of Justice of the European Union (hereinafter the CJEU) provided some essential guidance concerning the method of assessing and calculating damages under Art. 13 of the Enforcement Directive, Regulation No 2015/2424 (the Community Trade Mark Regulation), Regulation No 6/2002 (the Community Design Regulation) and Regulation No 2100/94 (the Community Plant Variety Rights Regulation). The examination of judgements requires taking into account the role of the CJEU as a court for a preliminary ruling, i.e. acting on a question referred by a national court, and carrying out an abstract assessment in terms of the compatibility of national law with regard to questions covered by EU law. In the author’s view, developments in the EU case law may lead to a higher level of protection and may minimise the negative ‘mosaic effect’ resulted from basing claims for damages on the substantive law of each Member State across the EU. Nevertheless, several issues were not resolved satisfactorily by the CJEU.