Court awards compensation and damages in fake Rolex case
The Maritime and Commercial Court has issued its decision in Rolex SA v Graff Seirup (Case V-11-11, March 2 2012).
Customs had withheld the release of a package containing a counterfeit Rolex watch and another package containing, among other things, two counterfeit Rolex watches. The packages had been forwarded from China and the labels with the recipient's address were identical (down to the spelling errors).
The recipient denied that he had ordered the watches, but provided no evidence that payment had not been taken from his credit card or his bank.
Rolex sued the recipient seeking, among other things, destruction of the watches and damages and compensation.
The court found that the defendant had to be the correct recipient of the counterfeit goods. In addition, the court held that the number of watches created a presumption that he had attempted to import the goods for commercial use and, consequently, that the defendant had violated Section 4 of the Trademarks Act.
Following this, the court ascertained that Rolex had a claim for reasonable compensation for the use of its trademarks under Section 43 of the Trademarks Act. After estimating the sales price which the defendant would have obtained for the counterfeit watches, the court assessed the compensation to be Dkr1,500 and also ordered the defendant to pay Dkr15,000.
The court appears to have problems when assessing compensation in this type of case. In Chanel v Medgyesi (Case V-11-05, May 4 2006), the court ordered the defendant to pay a licence fee of 25% of the sales price of the original products. However, this method of calculation seems to have been abandoned in the Rolex decision.
Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen
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