Lindsay Lane and Tom Moody-Stuart recently appeared before Mr Justice Newey in 32Red v WHG, Lindsay Lane appearing with Henry Carr QC for WHG and Tom Moody-Stuart appearing with Michael Silverleaf QC for 32Red. The case concerned a damages inquiry following a successful Trade Mark infringement liability hearing in October 2010. By trial it was agreed that 32Red could claim damages on the user principle, and the remaining questions concerned the relevant factors to take into account when ascertaining damages on this basis.
The judge held that in considering the hypothetical negotiation the Cout should have regard to the objective circumstances of the actual parties, except that the ability to pay and any unwillingness to agree must be disregarded, as should particular character traits. He also held that the availability of a “non-infringing” alternative was a relevant factor to take into account when assessing the reasonable price of user. Further, the licence being negotiated was to be a licence to do precisely what the Defendants had done, namely a 7 month use of the mark 32Vegas with some relaxation on quality controls.
The judge rejected the four comparable licences relied upon by 32Red as being of very little help in the circumstances of the case. He then held that despite the flaws in the evidence, an analysis of the economic benefits to WHG tended to suggest that the rebranding away from using the 32Vegas mark did not cause them any significant damage. The availability of a non-infringing alternative was found to be of central importance.
Accordingly the judge awarded damages in the amount of £150,000 as representing the licence fee that was likely to have been agreed for the use of the marks.