Supreme Court decision shows that infringers' evasive strategies do not always pay off

One of the problems that trademark holders typically encounter in Spain when it comes to obtaining compensation for damages is a lack of cooperation on the part of the infringer. The amount of compensation often depends on the disclosure of invoicing and accounts documents, and the infringer does not always cooperate with the court’s requests. However, a judgment of the Civil Chamber of the Spanish Supreme Court dated February 5 2013 (published in late March) demonstrates that these evasive strategies do not always pay off.

The judgment confirms a first instance court decision ordering that the defendant pay Levi Strauss a total amount of €831,633 in compensation in relation to the marketing of jeans bearing an imitation of Levi Strauss' trademark on the rear pockets. The criterion that was chosen in order to quantify the damages was the profit obtained by the infringer through the violation of the trademark rights. The sum had been calculated by a court-appointed expert based on an analysis of four years’ worth of invoicing by the defendant. The defendant had provided the turnover figures for the whole of that period but, as regards the manufacturing and marketing costs, the defendant's failure to provide data and a breakdown per model of jeans had prevented the expert from assessing the effect of the infringement, except for the last six months of the analysed period. Nevertheless, the first instance court saw fit to apply the percentage profit that could be ascertained for that six-month period to the time period for which information was missing.

The Supreme Court confirmed that the infringer’s attitude during the proceedings - which effectively obstructed the examination process, since the expert was not provided with information that could easily be obtained by a reasonably well-organised trader - justified the fact that the expert, in the absence of other data and based on well-founded suspicions of concealment, should base his calculations on the assumption that the profit for the final six-month period could apply to the rest of the time period.

With this decision, the Supreme Court demonstrates that the law can help get around the tactics employed by defendants in an attempt to obstruct legal actions. 

Ana Sanz Cerralbo, Elzaburu, Madrid