Decision sends confusing signals concerning compensation and damages

Denmark

The Maritime and Commercial Court has issued its decision in Hublot SA Génève v Bronsztejn (V 51-11, May 3 2012).

The defendants had bought and imported five counterfeit Hublot watches for Dkr2,250 from a Chinese online store. The release of the watches was suspended by Danish Customs. The defendants claimed that the watches were for their private use, but the court found that buying five watches at the same time and from the same seller created a strong presumption that the import had taken place for commercial reasons. The defendants were unable to invalidate this presumption and, consequently, the court ordered that the watches be destroyed.

The order for the watches had been placed by, and payment drawn from, one of the defendants. However, the second defendant was intended to be the real recipient of the watches and had actually paid the first defendant the amount drawn from her credit card. Consequently, the first defendant was also held liable for contributing to an illegal act.

The total compensation was estimated by the court - taking into consideration the price for which the defendant could have sold the five counterfeit watches - at Dkr2,500 (or Dkr500 per watch), and a further Dkr2,500 as compensation for the cost of destroying the watches. In addition, the defendants were ordered to pay Dkr5,000 in damages for trademark infringement and Dkr15,500 as costs.

This ruling appears to send confusing signals concerning compensation and damages. In a previous decision (Rolex v 2V Invest ApS (V-21-05)), the court ordered a company that had imported two counterfeit Rolex watches to pay Dkr75,000 as compensation for trademark infringement and use of Rolex's trademarks. In another decision (Chanel v A Medgyesi (V-11-05)), the court ordered the defendant to pay a licence fee of 25% of the price of the original products, even though the defendant had not sold any of the products, as they had been seized by Customs. The court may have changed its practice, but it is frustrating that it has not explained its reasons.

Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen

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