Trademark infringement

In re: “Prada, Elida Beatriz y otros c/ Agar Cross S.A. s/ daños y perjuicios” [1] the Federal Court of Appeals addressed the issue of parallel imports of trademarked goods and confirmed the accepted rule established by the Argentine federal courts forbidding the sale of imported goods that are identified by a foreign trademark without the consent of the owner of identical registered trademark in Argentina.

In this case, the trademark infringement itself was not debated, since the defendant admitted having committed the infringement.

However, in addressing the plaintiff’s damages claim, the court articulated that the first element is to identify if an actual damage has occurred and to make this determination it is not necessary to find willful intent to commit a trademark infringement by the defendant.  This is an important distinction because the Argentine legal system does not provide for punitive damages.

Once the court identifies that an actual damage has occurred, the court proceeds to quantify this damage.  In this case, the court acknowledged that it is generally very difficult to prove the exact amount of the damages, but the court assured that such difficulties should not preclude any compensation.

To establish the amount for damages, the court applied a moderate criteria, in view of the asymmetry between the defendant’s profits and the damages suffered by the plaintiff, as a result of the parties’ different commercial activities.

In this instance, since the defendant’s sales had deprived the plaintiff of the opportunity to supply their customers’ needs during the period in which the infringement occurred, the court raised the damages award that the trial court established and fixed damages at AR$ 90,000.