The High Court awarded Tommy Hilfiger Europe Inc. and Tommy Hilfiger Europe BV €5,000 in damages for copyright infringement and passing off in a dispute over clothing marketed as “Tommy Sports”. The ruling also restrained the first and third defendants from infringing the plaintiffs’ trademarks and from passing off clothing as the plaintiffs’ goods.
Carroll J said the initial copyright infringement was no longer contested: copies of Tommy Hilfiger garments had been exhibited for sale, and the defendants were liable for infringement. The court also found that garments using “Tommy” or “Tommy Sports” benefited from their association with the Tommy Hilfiger brand and amounted to passing off. It found that certain garments carried a flag closely copying protected Tommy Jeans and Tommy Hilfiger flags.
The dispute followed a February 1999 application under section 20 of the Trade Marks Act 1996. At a fashion fair at Dublin’s RDS, 47 garments were handed over by Derek McGarry after the order was explained to him and he had obtained legal advice. McGarry later argued that the order’s execution was oppressive and that non-infringing goods had been taken. The judge rejected that account, finding the garments were handed over voluntarily and none were seized.
An earlier interlocutory order had prohibited sale of garments in schedule 2 while allowing sales of schedule 1 garments subject to detailed accounts. The judge held that the schedule 2 ban was justified for garments with the copied flag. For schedule 1 garments, the court found that using “Tommy” and “Tommy Sports” in the context of the stand’s other goods amounted to passing off, although the garments were less obvious copies.
McGarry’s company had applied to register “Tommy Sports”, and that application remained pending at trial. The judge said that if registration were granted, use of the mark after the application would not amount to passing off; if the application were refused and the opposition upheld, use of “Tommy” on clothing would amount to passing off. On that condition, the judge measured damages for the period after 5 March 1999 at €10,000. The judgment does not state whether the registrar ultimately granted the mark.