Lithuanian Appeal court on May 18, 2015 issued decision in relation to community trademark “ThermoBlock”. The decision confirmed earlier decision of Vilnius district court, which was appealed by the defendants. This decision is important not only in regards Lithuanian national practice, however the court also solved few legal questions in relation to European Community trademark system.

First of all the court solved legal question weather Community trademark “ThermoBlock” of the client (plaintiff) can be declared invalid pursuant Article 52 of the Council Regulation (EC) No 207/2009 on Community Trademark; the defendants filed a counterplaint claiming that plaintiff’s Community trademark has been registered contrary to the provisions of Article 7). The court dismissed the counterplaint, because evidences of the defendants were in unreadable quality, had not been translated into Lithuanian, also, evidences were insufficient.

Second of all the court’s decision formed new practice regarding damages. The plaintiff asked for damages caused due to usage of the trademark of the defendants and asked the defendants to calculate what profit (profit of the infringers can be treated as damages done to trademark holder) they made using the infringing trademark. However calculations of the defendants showed that they incurred loss. Therefore the client (plaintiff) relied on provision of implemented Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights which states that instead of seeking actual damages the plaintiff may set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question. There were no negotiations or any previous communication regarding possible license fee or royalties between the parties before the case started. However the court solved the damage claim relying on existing license contract (concluded before the case started) between the plaintiff and a third person, stating sum of the contract represents fair lump sum of fees which the defendants would have paid had they requested authorization to use the trademark of the client.

Also, pursuant national legislation, in cases when there is bad faith of the infringer – the court may double the damage sum. In the current case the dispute started when one of the defendant’s filed an application to register the infringing trademark and the plaintiff cancelled it’s registration via opposition procedure. Despite the cancellation the defendant continued using the trademark. Therefore the court decided that this proves bad faith of the defendants and doubled sum of the damages.