All Counterfeits Cause Certain and Compensable Damages

On February 6, 2024, the Federal Court of Appeals in Civil and Commercial Matters, in the case “Videau Ricardo Roberto c/ Edilteco Sudamericana S.A c/ Cese de oposición al registro de marca” (Case 4400/2011), partially confirmed the first instance court’s decision, admitting the cease of use of the trademark “DRYWALL”—which the plaintiff owned—and reversing the rejection of damages.

While the first instance court had ruled that, considering the difficulties for calculating the compensation, the compensation requested could not be allowed, in its ruling, the Court of Appeals fixed a compensation sum for the damages caused by the unauthorized use of the trademark.

In partially overturning the first instance court’s decision, the Court of Appeals applied the case-law that holds that any misappropriation of a trademark or company name causes certain and not merely speculative damage to the owner of the trademark. Contrary to what had been decided in first instance, the Court of Appeals understood that the defendant could not rely on the difficulty of proving to avoid its civil liability, and considered it was reasonable to presume the existence of damages as a consequence of the unlawful use.

Based on these arguments, the Court of Appeals fixed the compensation amount in ARS 300,000,  plus interests.