Barcelona Enchantment Courtroom clarifies damages interval which may be claimed

As readers are properly conscious, Directive 2004/48 EC (referred to as the “Enforcement Directive”), stemming from Half III of the TRIPS Settlement, was meant to introduce a minimal degree of mental property safety all through the European Union. For instance, article 13 establishes that Member States should assure that judicial authorities can order the celebration discovered to infringe an mental property proper (“IPR”) to pay damages acceptable to the precise prejudice suffered:

1.   Member States shall be sure that the competent judicial authorities, on utility of the injured celebration, order the infringer who knowingly, or with cheap grounds to know, engaged in an infringing exercise, to pay the rightholder damages acceptable to the precise prejudice suffered by him on account of the infringement.

When the judicial authorities set the damages:

a) they shall consider all acceptable features, such because the unfavorable financial penalties, together with misplaced income, which the injured celebration has suffered, any unfair income made by the infringer and, in acceptable circumstances, components aside from financial components, such because the ethical prejudice prompted to the rightholder by the infringement;


b) as an alternative choice to (a), they might, in acceptable circumstances, set the damages as a lump sum on the idea of components similar to no less than the quantity of royalties or charges which might have been due if the infringer had requested authorisation to make use of the mental property proper in query.

 The place the infringer didn’t knowingly, or with cheap grounds to know, have interaction in infringing exercise, Member States could lay down that the judicial authorities could order the restoration of income or the cost of damages, which can be pre-established.”

Despite the Enforcement Directive’s harmonisation efforts, the Spanish Patents Act, on the one hand, and the Spanish Logos and Design Acts, on the opposite, don’t present a symmetric damages regime. For instance, article 45.2 of the Logos Act incorporates a 5 year-limitation:

2. Compensation for damages could solely be sought in relation to the acts of infringement happening within the 5 years previous to the date on which the corresponding motion is introduced.

Article 71.2 of the 1986 Patents Act contained an analogous limitation. Nevertheless, when the brand new 2015 Patents Act was accredited, this limitation was now not retained.

Towards this background, on 30 March 2022, the Barcelona Enchantment Courtroom handed down an attention-grabbing judgment clarifying additional that the 5-year limitation now not applies in patent circumstances. Within the matter at hand, the infringer had alleged that, because the criticism had been filed in October 2018, the patentee would allegedly be capable of declare damages solely from October 2013. The Courtroom rejected this line of argument in paragraph 76 of the judgment, noting that the non-inclusion of the 5-year limitation was not an oversight by the legislator, as proven by the legislative course of and the opinion of students.

All in all, it’s now crystal clear that the 5-year limitation doesn’t apply in patent circumstances. What’s much less clear is whether or not the 5-year limitation nonetheless contained within the Spanish Logos and Design Acts is definitely in keeping with the minimal degree of damages required by article 13 of the Enforcement Directive.

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