Trade Mark Litigation – Damages Decided Upon by Hypothetical Reference

Last month, the High Court awarded damages in a trade mark action based on the calculation for hypothetical licensing arrangements.

This method of calculating damages is called the ‘user principle’ and is commonly used within patent litigation. This means that the claimant need not establish actual lost sales or lost profits as an alternative, hypothetical calculation is made instead.

This calculation is based uopn the amount a defendant would have had to pay the claimant in licensing fees in a situation where the right to use the patent had been acquired.

Now, the ‘user principle’ has been applied in the field of trade mark litigation. Last month, William Hill was ordered to pay 32Red – an online casino – £150,000 in damages. This was the amount which would have been the value of a licensing agreement, if an agreement had been lawfully entered into enabling William Hill to use 32Red’s trademark.

The judge in this High Court action notably commented that “such damages can potentially be appropriate for trade mark infringement.”

Regardless of the quantum claimed, the cost of pursuing intellectual property litigation can be a key concern for many in-house teams. Clever use of litigation funding and insurance can help to ease this concern and provide a way of reducing the risk inherently associated with litigation generally. Speak to one of our brokers to find out more.