The Supreme Court dismissed both an appeal and a cross-appeal in a trade mark and passing-off dispute between Tommy Hilfiger companies and Derek McGarry and two companies he operated. The court left in place the High Court’s €15,000 damages award, injunction and costs order.
The High Court had awarded €5,000 for trade mark infringement and passing off involving garments in one schedule to an order, and a further €10,000 for passing off involving garments labelled “Tommy Sport” or “Tommy”. The second award depended on the first appellant failing to register “Tommy Sport”; the Controller of Patents refused his application in March 2006. The High Court also granted injunctive and ancillary relief.
The appellants challenged the award of costs, arguing that a statutory limit applied because the damages did not exceed £15,000. The Supreme Court held that the limit applied only where the Circuit Court had jurisdiction. It concluded that the trade mark infringement claim concerned a property right and that there was no evidence the registered trade mark’s value fell within the Circuit Court’s jurisdictional limit. It therefore dismissed the appeal on that ground.
The appellants also argued that the respondents’ evidence on an earlier ex parte application contained material non-disclosure and that a cease-and-desist letter would have been sufficient. The Supreme Court found any differences between the affidavit and oral evidence were not material. It held the trial judge had acted within her discretion in awarding the reserved costs.
The respondents’ cross-appeal sought higher damages or, alternatively, an account of the appellants’ profits. The Supreme Court said the respondents had not exercised their option to seek an account at trial and could not seek one for the first time on appeal. It also noted errors in the trial judge’s account of the evidence, including the number of garments and the treatment of turnover and profit figures.
The court nevertheless found no evidential basis for assessing damages by reference to profits from infringing goods. It said the respondents had not alleged a reduction in trade, price cuts, damage to reputation or a need for remedial advertising, and there was no basis to infer that the appellants’ sales would otherwise have gone to the respondents. The court concluded that the €10,000 award for the post-March 1999 period was not inadequate on the facts and dismissed the cross-appeal.