Damages for online trade mark infringement and passing off

In proceedings for passing off and infringement of the mark THEBIGWORD (registered for translation and interpretation services), Clarke J sitting in the Intellectual Property Enterprise court (IPEC) has awarded damages of over £140,000 to the claimant for loss of sales caused by the defendants’ use of websites containing “bigwordtranslation” in their domain names as part of a deliberate search optimisation scheme set up to divert the claimant’s potential customers to them.

The defendants’ evidence was unreliable and did not give a true picture of the level of enquiries made on its websites during the 34-month period that they were in operation. However, there had been a 50% increase in traffic to the claimant’s website after the defendants’ websites were taken down. It followed that the defendants’ websites had diverted significant numbers of potential customers away from the claimant’s website. A significant proportion of that traffic would have made an enquiry on the claimant’s website, of which some 75% would have converted to sales.

The lost profits from those lost sales were assessed at £106,533. However, that assessment significantly undervalued the lost sales arising from the defendants’ wrongdoing when the sales lost to the claimant from future repeat business from new customers was taken into account. That significant undervalue could not properly be compensated by an uplift of less than 33%. The correct approach was therefore to uplift the damages award by 33%, bringing the total award of damages to £142,044.

Case: Link Up Mitaka Ltd v Language Empire Ltd and another ([2018] EWHC 2633 (IPEC)) (9 October 2018).

PLC Practical Law 19.11.18