Critically analyse the mechanisms used by courts to assess damages in trade mark and patent infringement cases in one jurisdiction of your choice.


When trade marks or patents are infringed, the proprietor is entitled to various remedies. One such is an account of damages: a payment to compensate the proprietor for the harm done to them by the infringement. Determining the correct amount is a complex problem and the common law has developed assorted approaches over time.

This paper discusses the situation as it applies in England & Wales and in Scotland. Though these are two different jurisdictions, there is no significant difference in the law between them and the two often accept precedents from each other.

Trade Mark cases

The remedies available in the case of a trade mark infringement are set out in the Trade Marks Act 1994. For a registered trade mark these include injunctions, accounts of profit, damages, and any other relief available for infringement of a property right[1]. They also include orders to have the offending sign obliterated from all relevant material or, where this is not practical, to have the infringing goods destroyed[2]. Finally, an order may be made for the infringing goods to be forfeited to any person that the court deems suitable, such as the proprietor of the trade mark[3]. (This remedy requires the goods to have been ordered to be delivered up pending a decision on what action to take[4], but in Miller v Mersey Docks and Harbour[5] it was held that the two orders can be applied for together). Under Article 102(2) of the Community Trade Mark Regulation[6] the same sanctions are available for infringement of Community Trade Marks. International registrations under the Madrid Protocol are also treated as registered trade marks for this purpose[7].

In the case of an unregistered trade mark, remedies are limited to those covered by the law of "passing off". These include injunction, accounts of profit, and damages, but do not include the rights of erasure, destruction, and forfeit that are available for infringement of a registered mark.

It was established by Blofeld v Payne[8] that infringement of a trade mark (in that case, an unregistered one) is sufficient to establish an entitlement to damages. However, as discussed below, these need not be very large (in Blofeld the jury awarded damages of one farthing[9], the equivalent of about 9p in 2009 money[10]). It is also worth remembering that trade marks are only protected in trade use and use in other contexts is not infringement[11].

Damages are always available but an account of profits is not; it may only be claimed where the defendant knowingly infringed and only for his actions when he knew. In Edelsten v Edelsten[12] it was held that neither damages nor an account were available against an innocent infringer, only an injunction. This remains settled law in the case of an account of profits, but in Heath v Gorringe[13] the judge declined to follow it in respect of damages; as a result, it is now generally accepted that damages are available irrespective of knowledge. The choice is always between the two and both cannot be claimed. This first seems to have been expressed in relation to patents:

My Lords, I have only farther to observe that the decree of the Court below directed not only an inquiry as to damages, but also an account of profits. The two things are hardly reconcilable, for if you take an account of profits you condone the infringement. I therefore think, my Lords, that we were right in calling upon the Respondent's Counsel to elect between the two which he would adopt.[14]

but was soon treated as common law by the courts in trade mark and passing off cases[15]. It does not appear to have a statutory basis.

Patent cases

The remedies available in the case of a patent infringement are set out in the Patents Act 1977. These are explicitly limited to five possibilities: injunctions, an order to deliver up or destroy items, damages, accounts of profit, and a declaration that the patent is valid and has been infringed[16]. The mutual exclusion of damages and accounts of profit is a statutory matter[17]. Unlike trade marks, neither damages nor an account of profits are available against an infringer who was not aware of the patent and had no reason to be[18]; furthermore, the mere label "patented" is not sufficient to put someone on notice unless a specific (valid) patent number is specified[19]. As a historical note, the option of an account of profits was abolished by the Patents and Designs Act 1919 but reinstated by the Patents Act 1949.

Where a patent is renewed late but within the 6 month grace period, any infringement after the renewal date but before the renewal remains an infringement at law[20], but a court can refuse to award damages in respect of it if they see fit[21]. There do not appear to be any reported cases on this but presumably the intent is that damages should be awarded for a infringement continuing unchanged over the grace period notwithstanding that the renewal was late, but on the other hand where an infringement started because the late renewal led the infringer to think the patent had lapsed, it should not be subject to damages. This would also be consistent with the rule applying where the infringer was not aware of the patent.

The basic principles of Damages

The basic rule of damages was expressed by Lord Blackburn in Livingstone v Rawyards[22]:

where any injury is to be compensated by damages, in settling the sum of money to be given for reparation of damages you should as nearly as possible get at that sum of money which will put the party who has been injured, or who has suffered, in the same position as he would have been in if he had not sustained the wrong for which he is now getting his compensation or reparation.

They are not intended to compensate him for his troubles (though the successful claimant would normally receive his costs) nor are they intended to punish the infringer. In this they differ from an account of profits. In the latter case, the tortfeasor is treated as if they were an agent of the claimant and therefore any profit they made through their tort is handed over to the claimant. As discussed above, the claimant may choose between the two options, but is not entitled to both.

Damages are often determined by a separate inquiry. A difficulty in calculating damages is not a reason not to try but instead only award nominal damages; judges will make their best efforts to find a fair estimate. However, if the claimant is unable to show that they are likely to recover substantial damages, or if the court feels that the likely damages do not justify the cost of an inquiry, it may fix an amount without inquiry or award only nominal damages.

Where damages are claimed, the principles to be followed were made clear in the patent case of General Tire v Firestone[23] and partially expanded in Gerber v Lectra[24]. Firstly, it is for the claimant to show the amount of damages he has sustained, though the court is then to assess them in a liberal manner, giving any benefit of the doubt to the innocent claimant rather than the tortfeasor.

Secondly, the damages that can be claimed are limited to those that are foreseeable and were directly caused by the wrong; certain heads of damages may also be excluded as being contrary to public or social policy. The matter of causality is key. In Ultraframe v Eurocell[25] the judge pointed out that "It is not enough that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss."[26] In Ultraframe the plaintiff developed a new product, partly to compete with the infringing product but partly because of other competition and pending legal changes. Had the only reason to develop it been a genuine attempt to mitigate their losses from the infringement, this would have been an acceptable claim, but the other reasons meant that the costs involved were not a direct consequence of the infringement and therefore could not be claimed.

In patent cases, infringements relating to component parts require further discussion. Where the component is an essential part of a larger product, loss of profit on the whole product can be claimed[27]. But where it is a mere accessory and the product can easily be sold without it, then only the losses on the component itself would be allowed[28]; the remaining losses are not directly caused by the wrong.

Thirdly, even if the tortfeasor could have competed without infringing, he is not entitled to take this possibility into account when damages are calculated. This was established by United Horse-Shoe v Stewart[29]. In that case the defendants sold nails that infringed the claimant's patent; even though they could have sold equally good nails in place of them, the claimant was awarded damages on the basis that those sales were lost to him.

Fourthly, damages can consist of lost profits from sales, lost royalties from the licence the infringer should have taken, or a mix (though of course care must be taken not to double-count). Profits can be lost in a number of ways; the two most commonly cited are that the infringer made a sale that the claimant would otherwise have made, and that the claimant had to reduce prices or otherwise compete in a way that would have been unnecessary if the infringement had not taken place (i.e. they lost the benefit of monopoly pricing).

Although this principle applies equally to patent and trade mark cases, its practical application varies significantly between the two. With patents, the right is to prevent anyone else using the invention and, therefore, any infringing use causes damage by definition and all infringing sales can be claimed; it does not matter whether the purchaser thinks they are buying a product made with the patentee's permission or not. The purpose of trade marks, on the other hand, is to identify the origin of goods. If an infringing use causes a customer to be misled, then damage has been done to the trade mark proprietor. But if the unlawful use of a trade mark does not cause confusion then there is no damage done. Where there is no confusion at all, of course, the case will not succeed[30], but if only part of the infringing activity causes confusion, no damages are available in respect of the rest.

Finally, lost profits may also be derived from consequential losses where the infringement is used as a "bridgehead" or "springboard" from which to launch other, non-infringing, sales,

so long as these losses meet the "foreseeable and directly caused" test. For example, the inclusion of the product at suit may be necessary for each party to offer a "one-stop shop" capable of meeting a wide variety of needs. If so, the infringement would have allowed the tortfeasor to compete more actively in the sales of other products, causing the claimant to lose sales of those products or have to reduce its prices. The resulting losses are valid damages. Once again foreseeability is important: where customers are used to buying a range of related products from one place, as happened in Ultraframe, the consequential other sales are foreseeable. But unrelated goods that also happen to be on sale at the claimant's shop would be outwith the reasonable foresight of an infringer.

The effects of competition may also last beyond the end of the infringement and, once again, the resulting price depression can be a basis for claim. Similarly, in a patent case the infringement may have allowed the tortfeasor to build up a strong commercial position in advance so that it can compete more effectively when the patent expires, rather than having to wait for expiry before entering the market. As a result the patentee loses sales that would not have been protected by the patent or has to reduce prices more quickly after expiry with a resulting loss of profit; these losses are also a valid head of damages.

Calculating losses

As outlined above, there are two basic approaches to calculating the loss suffered from the infringing sales. If the claimant is making sales in direct competition with the tortfeasor, or could reasonably have done so, then the basis on which to claim is the gross profit of the lost sales; that is, the expected income from the sales minus the direct costs of the goods that would have been sold. In general other overheads such as salaries that cannot be directly linked to manufacturing and selling the goods would be excluded, but there may be circumstances where it is equitable to apportion part of them to the sales (for example if the quantities involved are such that more staff or plant would have been needed). A detailed analysis of overheads was carried out in Ultraframe[31] where, for example, it was established that there was sufficient warehouse space to accommodate any requirements had the lost sales been made and therefore no allowance should be made for warehousing. But, on the other hand, it was fair to make an allowance for distribution costs because extra sales would require more distribution to be done, though even here the effect was not linear because the claimant's lorries had spare space on them. At the end of the day it is necessary to bear in mind the judge's comment that "this is necessarily an imprecise exercise" and accept the fact that any figure can be no more than a best estimate.

The second approach to calculating the loss is on the basis of a royalty. For example, there are situations where the claimant would have been willing to license the invention or use of the trade mark (though the latter is relatively rare): a patent may be endorsed to allow licences as of right[32] or the proprietor of a trade mark may have shown his willingness to appoint all bona fide applicants as distributors or agents. It may also be the case that the court concludes that the licensing approach is the equitable one to follow because the claimant would have been unable to exploit their intellectual property directly, perhaps because they don't have the resources. An analogous situation is found in Livingstone where the defendant mistakenly mined coal from under the plaintiff's land: the plaintiff would not have been able to mine the coal economically - only someone of the size of the defendant could - and therefore he was only allowed to claim the same "lordship" as other lessors had done[33], not the whole value of the coal minus the cost of mining it.

There are also situations where the two approaches should be mixed. For example, consider a situation where the claimant and the infringer sell into the same market but the latter also sells into a completely unrelated market. It was held in Gerber and re-iterated in Ultraframe that in these circumstances the damages consist of lost profit on those sales that the claimant would have made (which might be one-for-one or might only be part of the total infringing sales in that market), plus a royalty on the remaining sales (that is, all those sales not counted under the first head), since this accurately represents the damage that the claimant has suffered in each of the two classes of sale. (If the latter class of sale predominates, the claimant might be better advised to seek an account of profits rather than damages, but should note that the choice needs to be made; it is not permitted to take profits from some sales and damages from others.) The principle dates back at least to 1914, where there was a question of damages in respect of sales that the claimant would not have made.

in such cases it appears to me that the correct and full measure is only reached by adding that a patentee is also entitled, on the principle of price or hire, to a royalty for the unauthorised sale or use of every one of the infringing machines in a market which the patentee if left to himself, might not have reached. Otherwise that property which consists in the monopoly of the patented articles granted to the patentee has been invaded, and indeed abstracted, and the law, when appealed to, would be standing by and allowing the invader or abstracter to go free. In such cases a royalty is an excellent key to unlock the difficulty[34]

It should be noted that, while this mixed approach is uncontroversial in patent cases (but see the discussion of the Enforcement Directive below[35]), Kerly expresses some doubt[36] that the same is true for trade marks. In Dormeuil v Feraglow[37] the judge commented that the lost profit approach and the royalty approach "are necessarily mutually exclusive", but does not appear to give any justification for this; his analysis concentrates on whether the royalty approach is available at all in trade mark cases and does not appear to reach a conclusion either way. While it is obvious that the two are mutually exclusive for any given sale, it is far from so that all sales have to be treated in the same way. In Stoke-on-Trent v Wass[38] the Court of Appeal looked more generally at what it called the "user principle" - that someone who wrongfully uses another's property is liable to pay for that use even when no pecuniary damage has been suffered:

"Supposing a person took away a chair out of my room and kept it for twelve months, could anybody say you had a right to diminish the damages by shewing that I did not usually sit in that chair, or that there were plenty of other chairs in the room?"[39]

The case concerned the right of the operator of a statutory market to prevent other markets within a certain distance[40]; no actual damage had happened from the operation of the defendant's market, but the plaintiff claimed a licence fee. The court decided that the "user principle" should be applied to wayleaves, detinue, and some cases of nuisance, and also to patents, but they were not willing to apply it to this situation. The problem with this decision is that all of patents, trade marks, and market rights are monopolies allowing the proprietor to prevent anyone else from using their property (that is, making copies of the invention, selling goods under the trade mark, and holding a market respectively). If the user principle clearly applies to the first and clearly does not apply to the last, where is the boundary? Both these cases leave it unclear as to whether the royalty approach may be used at all in trade mark cases, let alone whether the mixed approach can.

With each of these two approaches there are further matters to take into consideration.

Lost profits as damages

Looking first at the case where the calculation is on the basis of lost profit on the sales, the damages should be calculated on the basis of the sales that would have been made if the infringement had not happened. In some situations this is trivial, but often it is claimed that the proprietor had to reduce his sales price in order to compete with the infringer. Where that reduction (or an identifiable part of it) is due to the infringing competition, then all the income lost because of it can be claimed. For example, if the pre-infringement price was 90p, the claimant reduced it to 80p in order to compete, and the claimant's costs of sales were 30p, then the claimant is entitled to damages of 60p on each item that the infringer sold (no matter what price they were sold at) and 10p on each item that the claimant sold at the lower price.

However, the claimant needs to show that the price reduction was necessary to compete with the infringing sales. If other market considerations have forced the price reduction, then that is not damage to be compensated. In United Horse-Shoe the House of Lords decided that both claimant and defendant were selling into a highly competitive market and the former had had to reduce prices accordingly; therefore there was no head of damage on this basis. By contrast, in Ultraframe the judge decided that at least part of the price reduction was necessary to compete with the infringing sales at a lower price, and determined a price which - in his judgement - the claimant could have sold at in the absence of the infringement, awarding damages on the basis of the price reduction below that figure[41].

Another way in which this can matter is economies of scale. In Leeds Forge v Deighton[42] it was accepted that the claimant would have made more sales but for the infringement and so his fixed costs would have been spread over more units. Therefore his overall profit per unit - on both his own and the infringing sales - would have been higher. In practice applying this will require significant amounts of forensic accountancy; note that it is not the same as simply excluding the fixed costs from the lost sales.

Royalties as damages

Moving now to the approach of a royalty or licence fee, the obvious question to determine is what the amount of that fee should be. The most common approach followed is to determine the licence fee that would be agreed by a willing licensor and willing licensee. This concept was expanded by Lord Wilberforce in General Tire v Firestone; the parties are:

always the actual licensor and the actual licensee who, one assumes, are each willing to negotiate with the other-they bargain as they are, with their strengths and weaknesses, in the market as it exists.[43]

That is, the court must look at the considerations that the two parties would have taken into account if they had been negotiating. For example, if the licensee has the option of using different technology that does not infringe, they will offer a lower royalty than if the licensor has a lock on the market. At the end of the day this is a matter of evidence, not of any legal principle, and the facts of one case cannot automatically be transferred to another.

Often the best guide to determining the correct royalty is to look at the amount actually paid by other licensees. However, it is important to ensure that the circumstances are comparable. For example, in Boyd v Tootal Broadhurst Lee[44] the claim was for 7s per spindle[45] but the claimant had previously accepted a rate of 4s from other parties. Since those other settlements were made when the validity of the patent was in doubt, the court should ignore them in the different situation that the validity was not at issue. The agreement need not be the best that a willing licensee can get. In General Tire, licences were usually granted on a "most favourable licence" basis - if any other licensee was granted better terms, these licensees were entitled to revise their licence to include those terms as well. However, the court held that an infringer was not necessarily entitled to this treatment, though on a rather curious basis:

But a most favoured licensee clause can only find a place in an agreement that licenses use of the patent over an extensive period of time whereas ex hypothesi an infringer must be assumed to be seeking separate licences from day to day for each infringing use.[46]

This has the feeling that the judges were trying to find a way to indirectly punish the infringer for their actions without invoking the concept of punitive damages, and thus created a post hoc justification for withholding the "most favourable licence" status. Whether or not this is so, Lord Wilberforce appeared to be content with the result:

But the appellants are infringers, and I find nothing shocking or even surprising in the result that they should finish worse off than other companies which came to terms with the respondents.[47]

Another point to note in this context is that the royalty amount may be high enough that the infringer makes a net loss even though this would not happen between willing negotiators. In the Salbutamol case[48] the applicant claimed that the proposed royalty (based on a percentage of the patentee's selling price) was so high that they could not make a profit at their proposed selling price. The court held that they "cannot insist on a licence which will be profitable to them, however low they choose to fix their selling price"[49] and this position was followed with Cabot Safety Corp's Patent[50]. In the determination of damages the selling price has already been set, but there is nothing in either judgement that would prevent them applying to such a case; that is, the set royalty may result in a net loss to the infringer, not just a lack of profit. Lord Wilberforce's comment applies once again.

Where there is no negotiating history available for the court to derive a royalty figure from, some other approach must be used. One possibility is to look at other similar agreements in the relevant industry to find a basis; for example, it may be found that it is common to agree a royalty of between 4% and 6% of gross sales, in which case the court must investigate more fully to see where within this range should be chosen. Once again it is necessary to take into account the question of how comparable the situations are.

An alternative approach is also used in Ultraframe, the "profits available" method:

This involves an assessment of the profits that would be available to the licensee, absent a licence, and apportioning them between the licensor and the licensee.[51]

This method requires first determining what the gross margin is on sales, then determining a "fair" split. This was used in Gerber for valuing non-competing but infringing sales[52]. The judge was fighting with wildly different figures but eventually decided that a 25% share of a 60% gross margin was about right, leading to a royalty of 15% on sales. In Ultraframe the judge used the method to double-check proposed royalty rates[53]. In both cases, even though it is described as splitting the profits, the method was used to derive a royalty as a percentage of the sales price. This is a sensible outcome, since it eliminates arguments about the profit margins. In Cabot the method was also used as part of fixing a per-unit (rather than percentage) royalty[54], though so many figures have been redacted for commercial reasons that the analysis is hard to understand.

It is worth noting that the available profits method, popular though it sometimes is with both claimants and defendants, has been criticized in the courts. In the Cimetidine decision[55] it was pointed out that, by looking at the licensee's profits rather than the patentee's, the method goes against the principle set down in the Patents Act that licences shall be set so that:

the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the invention;[56]

In AEI Rediffusion[57] the method was rejected because the licensor would have no control over the amount they actually received - an inefficient licensee would pay less. However, the court here assumed the royalty would actually be set as (say) 35% of the profits, rather than being used to calculate a royalty based on selling price or unit sales as in Gerber and Cabot.

On the other hand, the available profits method does have the real benefit that it is the sort of calculation that willing players would actually go through in negotiating a licence. Overall, however, those studying cases that used this method are left with the feeling that judges use it simply as a way of justifying a rate they have already decided upon.

Finally, there is one statutory limitation on royalties as damages. Where a patent is endorsed to allow licences of right and the infringer undertakes to accept such a licence, damages are limited to twice the royalties payable if the licence had been taken out before infringement started[58].

Exemplary damages

The general principle of damages is that they are meant to compensate, not punish[59]. This means that exemplary damages are, in general, not available. However, Terrell points out[60] that a decision of the House of Lords[61] means that, in principle, they are available for any type of claim provided that one of the three situations mentioned by Lord Devlin in Rookes v Barnard[62] applies: oppressive, arbitrary or unconstitutional acts by government servants, where the defendant's conduct had been calculated by him to make a profit for himself which might well exceed the compensation payable to the plaintiff and "it is necessary to teach a wrongdoer that tort does not pay"[63], and where expressly authorised by statute. The second is the most likely to apply in patent and trade mark cases.

Subsidiary companies

A claim may be made for a loss made by a subsidiary company rather than being made by that company itself (for example because the subsidiary does not have a cause for claim). If the claim is successful, the damages suffered by the claimant are not simply those suffered by the subsidiary. Rather, the effect of the damage on the claimant must be assessed. This was discussed by Staughton LJ in Gerber[64]: the starting point for a 100% subsidiary is that damages will transfer on a pound-for-pound basis, but a range of events can override this assumption. For example, if the subsidiary is about to be sold its value may be determined on the basis of a multiple of recent profits. The damages will have altered the profits by that amount and therefore need to be multiplied in the same way. Conversely, it might be possible to show that the application of corporation tax means the net effect on the claimant is (say) only 78%[65] of that on the subsidiary. Finally, if the ownership is not 100% then obviously the damages need to be multiplied by the percentage shareholding.

Recent European legislation

The recent Intellectual Property Rights Enforcement Directive[66] touches on the subject of damages for enforcement, but largely merely repeats UK law on the topic, allowing either the lost profits or the royalties method of evaluating damages. In the former case it allows:

all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;[67]

The implementing Regulations[68] repeat this in different words.

There are three points to take note of. Firstly, although the Directive says that it does not create punitive damages[69], damages for "moral prejudice" could have that effect. Secondly, both lost profits and unfair profits can be claimed at the same time - in effect this allows an account of profits to be added to the normal "lost profits" head of damages. This could be seen as providing a statutory basis for exemplary damages as discussed above. Finally, the Directive states that the royalties basis is "as an alternative to"[70] the lost profits basis, for example where it would be difficult to determine the actual damages[71] suffered. The natural reading of this wording is that the mixed approach is not allowed and would mean that Watson v Pott[72] is no longer good law.

There do not seem to have been reported cases on any of these three aspects yet.


The principles behind the calculation of damages have always been the same: to put the innocent party in the position he would have been in but for the infringement. However, the detailed mechanisms have evolved over time and depend on the specific facts of a case. Recent EU legislation attempting to codify this has potentially had a disruptive effect, but it is too early to tell if that is the case.


[1] Trade Marks Act 1994 s.14(2).

[2] Trade Marks Act 1994 s.15.

[3] Trade Marks Act 1994 s.19(1)(b).

[4] Trade Marks Act 1994 s.16.

[5] Miller Brewing Company v The Mersey Docks and Harbour Company, [2003] EWHC 1606 (Ch), [2004] FSR 5 at paras 32-36.

[6] Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version); OJ L.78, 24.3.2009, p.1. This replaces and repeals regulation 40/94.

[7] Trade Marks (International Registration) Order 2008 (No. 2206), regulation 3(2).

[8] Blofeld v Payne & another, [1833] 4 Barnewall and Adolphus 410, 110 ER 509. Hereafter "Blofeld".

[9] 1 farthing was ¼d, or 0.1042p in current money; there were 960 farthings in a pound.

[10] Derived from various figures on the Office of National Statistics web site.

[11] See for example Mothercare U.K. Ltd v Penguin Books Ltd., [1988] RPC 113 in relation to a book title.

[12] Edelsten v Edelsten, [1863] 1 De Gex, Jones & Smith 18, 546 ER 72.

[13] Henry Heath Ltd. v Frederick Gorringe Ltd. [1924] 51 RPC 457, as reported in Gillette UK Limited and Another v Edenwest Limited, [1994] RPC 279, at 290.

[14] James Neilson, W. M. Tennent, J. Marshall, and D. H. Young v William Betts, [1871-72] LR 5 HL 1, at 22.

[15] Lever v Goodwin, [1887] LR 36 Ch. D. 1, at 7.

[16] Patents Act 1977 s.61(1).

[17] Ibid s.61(2).

[18] Ibid s.62(1).

[19] Ibid s.62(1).

[20] Ibid s.25(4)(b).

[21] Ibid s.62(2).

[22] Livingstone v Rawyards Coal Company, [1879-80] LR 5 App. Cas. 25. Hereafter "Livingstone".

[23] General Tire & Rubber Co Ltd v Firestone Tire & Rubber Co Ltd (No.2), [1975] 1 WLR 819, [1975] FSR 273. Hereafter "General Tire".

[24] Gerber Garment Technology Inc. v Lectra Systems Ltd. and Another, [1997] RP.C 443. Hereafter "Gerber".

[25] Ultraframe (UK) Limited v Eurocell Building Plastics Limited, Eurocell Profiles Limited, [2006] EWHC 1344 (Pat), 2006 WL 1635019. Hereafter "Ultraframe".

[26] Ultraframe, para 47(ii).

[27] Meters Ltd. v. Metropolitan Gas Meters Ltd. [1910] 27 RPC 721, [1911] 28 RPC 157, cited in Gerber.

[28] Clement Talbot Ltd. v. Wilson [1909] 26 RPC 467, cited in Gerber.

[29] The United Horse-Shoe and Nail Company Limited v John Stewart & Co., [1888] LR 13 App. Cas. 401. Hereafter "United Horse-Shoe".

[30] See, for example, Radio Taxicabs (London) Ltd v Owner Drivers Radio Taxi Services Ltd, [2004] RPC 19.

[31] Ultraframe, paras 139 to 148.

[32] Patents Act 1977, c.37, s.46.

[33] The "lordship" is effectively a royalty per unit mass of coal removed; the plaintiff also received compensation for damage done to his land and the houses on it by the defendant's mining activities.

[34] Watson, Laidlaw, & Co., Limited v Pott, Cassels, & Williamson, 1914 SC (HL) 18, Lord Shaw at 32.

[35] "Recent European legislation", page 15.

[36] Kerly's Law of Trade Marks and Trade Names, 14th ed. at 19-133.

[37] Dormeuil Frères S.A. and Another v Feraglow Limited and Another, [1990] RPC 449, at 464.

[38] Stoke-on-Trent City Council v W. & J. Wass Ltd., [1988] 1 WLR 1406.

[39] The Owners of the Steamship "Mediana" v The Owners, Master and Crew of the Lightship "Comet", [1900] AC 113, Earl of Halsbury LC at 117.

[40] 6⅔ miles. Bracton, On The Laws and Customs of England, explains this as being one-third the distance a person can travel in a day, allowing the market to be one-third of the day. Jonathan Hill makes a brief but fascinating diversion into the question of distance, listing other distances that applied from time to time or might have been intended, in Markets and the common law, Legal Studies vol.5 issue 3 p.320-330.

[41] Ultraframe paras 127 to 138, 154, and 155.

[42] Leeds Forge Co.Ltd. v Deighton's Patent Flue Co., [1908] 25 RPC 209.

[43] General Tire at 288.

[44] Boyd v. the Tootal Broadhurst Lee Co. (1894) 11 RPC 175. Hereafter "Boyd".

[45] The amounts in Boyd were lost profits from infringement, but the court in General Tire accepted that the same principle applies to licence fees. 1s (one shilling) is equal to 5p in current money.

[46] General Tire at 286.

[47] General Tire at 287.

[48] Allen & Hanburys Limited's (Salbutamol) Patent, [1987] RPC 327.

[49] Ibid at 378.

[50] Cabot Safety Corp.'s Patent, [1992] RPC 39 (hereafter "Cabot") at 55.

[51] Ultraframe para 47(viii).

[52] Gerber at 419-420.

[53] Ultraframe paras 150 to 153.

[54] Cabot at 54.

[55] Smith Kline & French Laboratories Ltd's (Cimetidine) Patent (No.2), [1990] RPC 203. at 244.

[56] Patents Act 1977, s.50(1)(b) dealing with the duties of the comptroller when setting licences of right.

[57] AEI Rediffusion Music Limited v Phonographic Performance Limited, [1998] EMLR 240, at 268.

[58] Patents Act 1977, s.46(3)(c). Infringements consisting of imports from outside the EEC are excluded.

[59] See page 3 above, text relating to n.22.

[60] Terrell on the Law of Patents, 16th ed. at 13-43.

[61] Kuddus v Chief Constable of Leicestershire Constabulary, [2001] UKHL 29, [2002] 2 AC 122.

[62] Rookes v Barnard and Others, [1964] 2 W.R 269, [1964] AC 1129, at 1226-1227.

[63] Ibid at 1227.

[64] Gerber at 456 et.seq.

[65] This might be the case if the applicable marginal tax rate was 22%.

[66] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights; OJ L.195. 2.6.2004, p.16. Hereafter "Directive".

[67] Directive, article 13(1)(a).

[68] Intellectual Property (Enforcement, etc.) Regulations 2006 (No. 1028).

[69] Directive, recital 26: "The aim is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion".

[70] Directive, article 13(1)(b).

[71] Directive, recital 26.

[72] See n.34 and the related text.

Table of legislation

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version); OJ L.78, 24.3.2009, p.1.

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights; OJ L.195. 2.6.2004, p.16.

Intellectual Property (Enforcement, etc.) Regulations 2006 (No. 1028).

Patents Act 1977 c.37.

Trade Marks Act 1994 c.26

Trade Marks (International Registration) Order 2008 (No. 2206).

Table of cases

AEI Rediffusion Music Limited v Phonographic Performance Limited, [1998] EMLR 240.

Allen & Hanburys Limited's (Salbutamol) Patent, [1987] RPC 327.

Blofeld v Payne & another, [1833] 4 Barnewall and Adolphus 410, 110 ER 509.

Boyd v. the Tootal Broadhurst Lee Co. (1894) 11 RPC 175.

Cabot Safety Corp.'s Patent, [1992] RPC 39.

Clement Talbot Ltd. v. Wilson [1909] 26 RPC 467.

Dormeuil Frères S.A. and Another v Feraglow Limited and Another, [1990] RPC 449.

Edelsten v Edelsten, [1863] 1 De Gex, Jones & Smith 18, 546 ER 72.

General Tire & Rubber Co Ltd v Firestone Tire & Rubber Co Ltd (No.2), [1975] 1 WLR 819, [1975] FSR 273.

Gerber Garment Technology Inc. v Lectra Systems Ltd. and Another, [1997] RP.C 443.

Henry Heath Ltd. v Frederick Gorringe Ltd. [1924] 51 RPC 457.

James Neilson, W. M. Tennent, J. Marshall, and D. H. Young v William Betts, [1871-72] LR 5 HL 1.

Kuddus v Chief Constable of Leicestershire Constabulary, [2001] UKHL 29, [2002] 2 AC 122.

Leeds Forge Co.Ltd. v Deighton's Patent Flue Co., [1908] 25 RPC 209.

Lever v Goodwin, [1887] LR 36 Ch. D. 1.

Livingstone v Rawyards Coal Company [1879-80] LR 5 App. Cas. 25.

Meters Ltd. v. Metropolitan Gas Meters Ltd. [1910] 27 RPC 721, [1911] 28 RPC 157.

Miller Brewing Company v The Mersey Docks and Harbour Company, [2003] EWHC 1606 (Ch), [2004] FSR 5.

Mothercare U.K. Ltd v Penguin Books Ltd., [1988] RPC 113.

Radio Taxicabs (London) Ltd v Owner Drivers Radio Taxi Services Ltd, [2004] RPC 19.

Rookes v Barnard and Others, [1964] 2 W.R 269, [1964] AC 1129.

Smith Kline & French Laboratories Ltd's (Cimetidine) Patent (No.2), [1990] RPC 203.

Stoke-on-Trent City Council v W. & J. Wass Ltd., [1988] 1 WLR 1406.

The Owners of the Steamship "Mediana" v The Owners, Master and Crew of the Lightship "Comet", [1900] AC 113.

The United Horse-Shoe and Nail Company Limited v John Stewart & Co., [1888] LR 13 App. Cas. 401.

Ultraframe (UK) Limited v Eurocell Building Plastics Limited, Eurocell Profiles Limited, [2006] EWHC 1344 (Pat), 2006 WL 1635019.

Watson, Laidlaw, & Co., Limited v Pott, Cassels, & Williamson, 1914 SC (HL) 18.

Further reading

L.Bentley & B.Sherman, Intellectual Property Law, pub. Oxford University Press 2008, ISBN 0199292043.

L.Harrold, Quantum leaps, Copyright World 2006, 164, 9-11 (on the Ultraframe case).

Kerly's Law of Trade Marks and Trade Names, 14th ed., pub. Sweet & Maxwell 2005, ISBN 0421860804.

H.MacQueen, C.Waelde, G.Laurie, Contemporary Intellectual Property Law and Policy, pub. Oxford University Press 2008, ISBN 9780199263394.

Terrell on the Law of Patents, 16th ed., pub. Sweet & Maxwell 2005, ISBN 0421886501.

Back Back to the LL.M. index. To legal To my other legal topics index. CDWF Back to Clive's home page.