The High Court has refused Dunnes Stores’ application to require Aldi Stores (Ireland) Limited and Aldi GmbH & Co. KG to choose between general damages and an account of profits before the damages stage of their trademark case.
Mr Justice Cregan ruled that the plaintiffs could pursue both claims. He said the rule requiring an election between remedies applies to an inquiry into the plaintiffs’ own lost profits and an account of the defendant’s profits. It does not prevent a claim for general damages, which address non-pecuniary loss, alongside an account of profits.
The dispute followed an earlier split trial, with liability and the amount of any remedy dealt with in separate modules. The court had delivered its liability judgment in June 2015, and the damages module was to await the defendant’s appeal. The judgment in this application does not resolve the amount of damages or profits, or determine whether an account of profits should ultimately be granted.
Aldi had pleaded both remedies. In particulars, it claimed general damages for alleged harm to the reputation and goodwill attached to its marks. It also sought an account of profits, saying Dunnes benefited from banners and shelf-edge labels found to constitute a separate infringement. Aldi said it was prepared to limit that profits claim to sales of products specifically compared with Aldi products while the materials were displayed. These were the plaintiffs’ claims, not findings in this application.
Dunnes argued that a plaintiff must choose between damages and an account of profits, and that the choice should be made before discovery to avoid unnecessary cost and work. It also maintained the remedies could not both be pursued. Aldi argued it was entitled to maintain its claims and should not have to choose without information about the potential profits.
Justice Cregan said the purpose of the election rule was to prevent a plaintiff recovering twice for overlapping economic loss and thereby receiving a windfall. He found that general damages and an account of profits were not necessarily duplicative. He also concluded that forcing a choice before discovery, without figures on either remedy, would leave the plaintiffs to make an uninformed decision.
The judge considered Article 13 of the EU Intellectual Property Rights Enforcement Directive. He concluded that the national rule, as he understood it, was consistent with the Directive: a plaintiff could seek an account of profits and general damages, subject to the principle against over-compensation.
The court refused Dunnes’ application. The ruling permits the claims to proceed at this stage; it does not award either remedy or decide their eventual value.