DAMAGES FOR CTM INFRINGEMENT: DOES ANYONE KNOW?

The IPKat has been pondering on a couple of difficult questions involving the multi-jurisdictional enforcement of Community trade marks (CTMs).

First, if a CTM is infringed in, say, France, Germany and Italy, and the owner sues successfully before a Community Trade Mark Court in Germany, he is entitled to ask for damages in all three countries. Is he entitled to damages based on German law for all three countries, or does he have to settle for German quantum in Germany, French quantum in France and Italian quantum in Italy? In the German Home Depot case earlier this year the trial court ordered German damages in respect of several countries, but did appear to limit its reasoning to cases where the defendant is mainly German and the bulk of the infringement takes place in Germany. However, Article 98(2) of the CTM Regulation appears to suggest that, so far as damages are concerned, the CTM Court should apply the law of each country in which infringement takes place. Art.98(2) states:

"1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.

2. In all other respects the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law".

Secondly, private international law principles normally say that, in a dispute about a contract governed by (say) French law, a UK court would consider French law to be the same as UK law unless one of the sides adduced evidence to the contrary. Does the same principle apply here, to the rules relating to the assessment of damages, or does the regulation's instruction to "apply foreign law" in Art.98(2) make a difference?

If you have any bright ideas or, better still, correct and authoritative answers, can you please either post them below or email them to the IPKat here.