Court rejects Hilfiger label claim of entitlement to higher damages

THE SUPREME Court has rejected claims by a designer label firm that it was entitled to “more appropriate” damages than the €15,000 awarded to it by the High Court in its successful action against an Irish company for selling garments which infringed its trademark logo.

Tommy Hilfiger Europe Inc and Tommy Hilfiger Euro were awarded the damages by the High Court against wholesaler Derek McGarry, trading as Lifejacket, Goodstock Ltd and Lifejacket Ltd, of Morehampton Road, Dublin, over the latter’s selling of garments bearing the trademark infringing logos “Tommy Sport” and “Tommy”.

An appeal was lodged to the Supreme Court by Mr McGarry and the companies over the High Court decision itself while Tommy Hilfiger cross-appealed on the grounds that the €15,000 should be substituted with an award of “appropriate damages” or with a taking of account of the profits earned from the sale of the infringing clothing.

The High Court found the infringements occurred pre-March 1999 and post-March 1999, when Mr McGarry applied to have the logo “Tommy Sport” registered with the controller of patents.

The court set damages pre-March 1999 at €5,000, with €10,000 as the figure to be applied after that date if the patent application was rejected.

The controller of patents did refuse to register the “Tommy Sport” logo and the €15,000 award therefore stood.

Delivering the Supreme Court judgment yesterday, Mr Justice Joseph Finnegan said Tommy Hilfiger had not sought an account of the defendants’ profits in its High Court action and was not entitled to seek such an account now because the firm was not satisfied with the amount of the award.

The object of the award of damages was to give compensation for loss suffered and there was no evidence to form the basis of an award for damages based on profits made from the sale of the infringing goods, the judge said.

Mr Justice Finnegan said he was satisfied the pre-March 1999 award (of €5,000) was not out of line with awards of damages in similar cases. Nor did it depart in principle from other cases where infringement of a trade mark and passing off of goods were combined.

This case was not similar to other “passing off” cases as there was no question here of permanent and continuing damage, and Tommy Hilfiger also did not allege any diminution in their trade.

In those circumstances, it was difficult to see how the post-March 1999 award of €10,000 was inadequate, he said.

He dismissed both the appeal by Mr McGarry and his companies and the cross-appeal by Tommy Hilfiger, and upheld the High Court order.