Bridgestone ordered to pay $5 million in damages in RIVERSTONE case
On June 28 2014 the Civil Chamber of the Supreme Court of Justice rendered its decision in connection with a writ of cassation filed by Muresa Intertrade SA against a resolution dated May 23 2013 issued by the First Upper Court of the First Judicial District of Panama.
Pursuant to this decision, Bridgestone Corporation and Bridgestone Licensing Services Inc (collectively Bridgestone) were ordered to pay, jointly and severally, $5 million in tort damages, and the court expenses of Muresa and Tire Group of Factories Ltd Inc in an amount of $431,000.
The Civil Chamber of the Supreme Court reached its decision after finding that the filing by Bridgestone of an opposition which resulted in the cessation of the commercialisation of products covered by the mark RIVERSTONE had been made in bad faith and in a hasty manner.
The following evidence was filed by Muresa and Tire Group of Factories:
- the translation into Spanish of the correspondence sent by Bridgestone's counsel, in which it was suggested to the counsel of Muresa and Tire Group of Factories that the commercialisation of the products covered by the mark RIVERSTONE should cease;
- a copy of the judicial resolution issued by the Third Upper Court of the First Judicial District of Panama in which the court had admitted a writ of dismissal filed by Bridgestone within the opposition procedure in connection with Registration No 120823-01 for the mark RIVERSTONE (and design) in Class 12 filed by Bridgestone against Muresa, and in which LV International Inc and Tire Group of Factories were intervening parties;
- testimonial evidence seeking to prove that, as a result of the opposition procedure in connection with Registration No 120823-01 filed by Bridgestone, Muresa had suffered commercial damages as it had to use other marks, including marks of inferior quality, in order to supply market demand; and
- an expert witness report seeking to evidence the decrease in Muresa's sales.
The Supreme Court found that Bridgestone's counsel had, in an intimidating fashion, instructed the filing in several countries of oppositions against the registration of the mark RIVERSTONE, adding that Muresa had had to abstain from selling products under the mark. This constituted intimidating and threatening behaviour.
The court considered that there was strong evidence that Muresa and Tire Group of Factories had the lawful right to market such products, which were of great importance for their bottom line and competed with the commercial activities of Bridgestone.
Importantly, Justice Harley J Mitchell D dissented in connection with the cassation decision. The dissent referred mainly to the actions carried out by Bridgestone which the majority had found to cause damages to Muresa and Tire Group of Factories, namely:
- the correspondence sent by Bridgestone's counsel; and
- the filing of the opposition.
In Justice Mitchell's view, these did not constitute hasty actions, as the filing of the opposition did not imply the cessation of the use of the mark, nor did it constitute an injunction of any type. Justice Mitchell further argued that the content of the correspondence did not constitute a threat, as it was up to the recipient of the letter to decide whether or not to use the mark over which it had a right. In addition, it was incorrect to qualify as hasty the dismissal of the appeal. The dissenting opinion concluded that finding against Bridgestone for procedural reasons such as the filing of the writ of dismissal was an incorrect understanding of the concepts of hastiness and abuse of process.
Justice Mitchell also contested the claim by Muresa and Tire Group of Factories that, as a result of the opposition, they had ceased selling products under the RIVERSTONE mark. The decision stated that "the damages suffered were the result of a decrease in sales” and, therefore, the commercialisation of the products had never ceased but had only decreased.
Finally, he did not agree with the way in which the quantification of the damages had been made, as there was no analysis regarding the amount of $5 million and such award had been granted with little legal basis.
Marissa Lasso De La Vega, Alfaro Ferrer & Ramirez, Panama
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