Remedies against infringement
The procedure for infringement proceedings is normally a High Court application, where the evidence is given on affidavit, and counsel will present argument. What happens if the judge agrees with your claim that the defendant infringes your trade mark rights? The Trade Marks Act sets out the following remedies which the High Court can put in place.
An interdict
This is a court order directing the defendant to do something — in this case, it will be to stop using the trade mark. As we have already noted, if the defendant disobeys the order, this is contempt of court — and the offender can be sent to prison.
Delivery up
This order directs the defendant to remove the infringing trade mark from all material — packaging, advertising, stationery, etc. If it cannot be removed, the defendant must hand over (that is, deliver up) all such material to the trade mark proprietor to destroy.
Damages
The Court can order that the defendant compensate you for the ‘damages’ you have suffered — in other words, if the defendant’s confusingly similar trade mark caused you to lose sales.
Reasonable royalties
Proving damages means proving that you have lost sales, and that you would have made the sales if the defendant had not used the infringing trade mark. This is difficult to do, so the Trade Marks Act gives you the option, instead, of recovering a royalty from the defendant for the sales it did make (and whether they actually caused you to lose sales, or not). This makes it a lot easier.
To recover a royalty, you have to establish, basically:
- the royalty rate that would be payable by a licensee; multiplied by
- the number of items the defendant sold; and
- the retail sales price of each item.
Read section 34(3) of the Trade Marks Act.
The Court will also order the defendant to pay a proportion of your legal costs. Of course, if you lose the case, the judge will order you to pay a proportion of the defendant’s costs.
There is an appeal open to the unsuccessful party. However, an appeal is not automatic and there are time limits in place. To start the appeal process, the unsuccessful party must lodge an application for leave to appeal within 15 business days of the judgment. This application suspends the operation of the Court orders until the end of the appeal process.