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News

MAQS LAW FIRM WINS PRINCIPLE CASE IN NORWAY FOR GUCCIO GUCCI S.P.A. AND PRADA S.A.
2009-10-30
The City Court of Oslo has on the 4th of September 2009 issued a favourable judgement by default, awarding trademark owners a 17,5% license fee of the comparable original product price in a custom seizure involving products infringing on Guccio Gucci S.p.A and Prada S.A.

The 7th of November 2008 a shipment from Hong Kong containing 914 counterfeits, including 97 Gucci watches was seized by the Norwegian Customs. The deadline for legal action in Norwegian custom seizures is 6 weeks and the deadline was extended as contact to the infringer was not possible. The 11th of May 2009 the case took a new turn as a shipment of 24 counterfeit Prada sunglasses originating from China was seized by the Norwegian customs also destined to the same infringer.

Not being able to initiate contact to the infringer, the right holders decided to file a lawsuit before the Norwegian City Court (Tingretten) claiming damages and demanding destruction of the seized goods. Arguing that the goods seized were imitations of luxury goods, wherefore a considerable license fee should be rendered, the following case law was invoked; a Danish decision (Maritime and Commercial Court decision of 4. may 2006) awarding 25% in license fee and a Norwegian decision (Borgarting Lagmannsrets decision of 8. may 2006) awarding 10% in license fee.

In respect of the above the right holders claimed a percentage in between, thus at least 17,5% in license fee. On 4th of September 2009 the court found that the amounts claimed were in accordance with case law in general, citing the above decisions, and rendered a judgement by default awarding the right holders an amount equivalent to 17,5% of the comparable original product price of the products seized, moreover case costs in the amount of NOK 20.000,00.

Although this decision is rendered as a judgement by default it is significant to note that the Norwegian City Court takes into consideration that the license fee should be calculated in regard to the original comparable product price and moreover sets the license fee to 17,5%, making this an important decision in accumulating compensation for right holders and stopping infringements by border measures.

Contact: Jeppe Brogaard Clausen (jbc@dk.maqs.com) and Frank Jørgensen (frj@dk.maqs.com)