Additional Damages for Trade Mark Infringement in Hugo Boss Trade Mark Management GmbH v Sasalili Oxford Fia

The award of damages in Hugo Boss Trade Mark Management GmbH & Co Kg v Sasalili Oxford Fia is a useful guide for the award of damages for trade mark infringement. Middleton J awarded both compensatory damages and additional damages to the Applicant for Trade Mark infringement pursuant to the Trade Marks Act 1995 (Cth).

Facts

The Respondents have had manufactured and offered for sale a range of apparel, including men’s, women’s and children’s clothing and hats bearing the mark BOSSIT. These items were marked and offered for sale on both Facebook and on three occasions at marked in New South Wales including the popular Fairfield and Blacktown markets.

On 6 June 2014, the Court had ordered the Respondents pay the Applicant damages to be assessed for infringement of the Hug Boss Trade Mark, together with interest, or, at the Applicant’s election, an account be taken of the Respondents’ profits, together with interest. The Applicant had elected that the Respondents pay the Applicant damages, including additional damages, together with interest.

Damages

The statutory regime for damages under section 126 of the Trade Marks Act 1995 (Cth) allows an infringed trade mark owner to elect for an account of profits or compensatory damages. In this case, the Applicants elected to obtain damages in the alternate to an account of profits. The Applicant also sought additional damages.

Additional Damages

At [23] to [26] Middleton J considered the award of additional damages.

(a) Middleton J satisified himself that the Respondents have a disregard for the Applicant’s property rights in the Hugo Boss Trademark. In reaching this conclusion, he considered the Applicant’s evidence regarding the Respondent’s continued failure to comply with the demands of the Applicant’s having been informed that they had infringed the Applicant’s intellectual property rights.

(b) His honour considered the effect of the Respondents on the image and reputation of the Applicants. His honour was of the view that conduct of the Respondents had the potential to damage the Applicant’s general image, reputation and brand, and to damage Australian consumers’ perception of the brand, as well as damage to the Applicant’s market position. Because of this, his honour considered the infringement particularly insidious and in need of deterrence.

His honour ordered an award for additional damages of $10,000 to deter the Respondents from engaging in the infringing conduct jn the future. In his reasoning, Middleton J also highlighted that the additional damages were intended to serve as a general deterrent to other would be infringing retailers in the Australian marketplace.

For the full decision: https://jade.barnet.com.au/Jade.html#article=354479

Originally published on Intellectual Property Barrister: https://trademarkbarrister.wordpress.com/

Liability limited by a scheme approved under Professional Standards Legislation

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