Determining unity of intentions of a person who illegally placed a trademark on several goods

Most often, trademarks are illegally placed not on single goods, but on entire lots, and an offense can be proved by documents confirming several episodes of the purchase of counterfeit goods. In such cases, the key category is the defendant's unity of intent, since if it exists, compensation will be awarded for a single fact of infringement.

The issues of determining the amount of compensation for violation of an exclusive right in cases where the same means of individualization is placed not on a single product, but on a batch of goods or simply on several of them, arise in practice regularly, since only in rare cases the violation is limited to a single illegal using the object.

The key category in this case is the unity of intentions of the offender - compensation for violation of an exclusive right is a measure of responsibility for the fact of a violation covered by such unity (paragraph 65 of the Decree of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 65). If the unity of intentions is not proven, each sale of material media (whether identical or not) is qualified as an independent violation of the exclusive right.

At the same time, this circumstance is not so easy to substantiate and prove. In a recent case N A51-1401 /2021 [1], 3D Sparrow Group Limited filed a lawsuit to recover compensation for infringement of exclusive rights to trademarks N 572790 and N 748258 (БУБА). The plaintiff presented to the court evidence of two episodes of the purchase of several goods, each of which featured trademarks. The court of first instance, considering the unity of intentions of the defendant established, recovered 5,000 rubles for each trademark.

The court proceeded from the fact that the entrepreneur sold counterfeit goods with a difference of three weeks, while after the first purchase the defendant was not warned by the plaintiff about the violation of exclusive rights to trademarks, nor did the defendant receive a demand to stop the violation of rights to means of individualization.

However, the Intellectual Property Court sent the case back for a new trial, indicating that the courts of first and appellate instances formally applied the approach set out in the ruling of the Supreme Court of the Russian Federation dated December 7, 2015 in case N A03-14243/2014. According to this position, if the purchases of goods were made within a short period of time, for all the facts after the first purchase, the defendant was not warned by the plaintiff about the violation of the exclusive rights to trademarks, the defendant did not receive claims to stop the violation of the rights of the plaintiff, the sale by the defendant of such goods can be be treated as one case of unlawful use of the plaintiff's trademarks.

At the same time, in this case, the relevant arguments of the entrepreneur were not voiced and no evidence was presented to justify the unity of intentions on the part of the defendant.

It should be noted that in a number of cases [2], on the contrary, the formal application of the specified legal position of the Supreme Court of the Russian Federation made it possible to establish the unity of intentions of the defendant and reduce the amount of compensation claimed.

1.Ruling of the Court for Intellectual Property Rights dated March 24, 2022 N C01-57/2022 in case N A51-1401/2021

2.Rulings of the Court for Intellectual Property Rights dated October 14, 2021 in case N A46-1490 / 2021, dated July 9, 2021 in case N A03-7290 / 2020, dated March 30, 2021 in case N A67-10879 / 2019