User Based Royalties Awarded in TM Infringement Claim

In the recent case of National Guild of Removers & Storers Ltd v Silveria (t/a C S Movers) [2010] EWPCC, the Patents County Court considered whether damages calculated on a "user" basis (a measure usually used in patent cases) are available in trade mark cases. A secondary issue was whether a given case must involve lost sales in order to be successful. In the case in question, the National Guild of Removers & Storers Ltd (an association representing members of the removals and storers industry) (the "Guild") brought a claim of trade mark infringement against four separate defendants, of which only one was not a member of the Guild. These four claims were then joined in relation to the issue of damages. A common measure of damages in trade mark cases is on the basis of lost sales. However, the Guild had not suffered this kind of loss. When considering the damages for the acts of infringement, HHJ Birss QC took into account the rules of membership of the Guild, which provide for a trade mark licence allowing for members to use the Guild's trade marks for advertising in trade directories. Such licences may in certain instances be valid even after termination of membership, for a fee. The court also took into account the rulings in landmark cases such as General Tire v Firestone [1976] RPC 197, Dormueil Freres v Feraglow [1990] RPC 449 and Irvine v Talksport [2003] EWCA Civ 423 [2003] FSR 35 in order to establish whether such damages are recoverable in a trade mark and passing off case and, if so, what factors must be taken into account when assessing the level of such damages. As a matter of general principle, use of a mark without permission, resulting in infringement, is an act capable of damaging...