Vsemarket, the owner of an online marketplace, and Vassily Levchenko, an individual, were selling products bearing the Gaz car logo.
Gaz PJSC filed a claim for joint recovery of RUB 3,241,220 as compensation for the use of its trademark in connection with clothes offered for sale on the website. The court accepted the claim. Vsemarket did not acknowledge its guilt because the online market place owner believes that any designer may place an image on the website and receive remuneration, if the image has been printed out. In its complaint filed with the Supreme Court, Vsemarket insists that the courts wrongly determined the amount of payment, as they took into account the offers for sale of counterfeit products and not the counterfeit products actually sold. The applicant’s website only contains a catalogue of designs from which one can select a picture for print out, but the website does not contain any information about availability of products at the online store.
In the opinion of Maxim Volkov, attorney at PATENTUS, the Supreme Court should, when assessing the amount of compensation, take into account amounts of products sold or of offers for sale. Such situations may bring about claims for compensation for infringement of trademark exclusive rights.
Maxim believes that such method of calculation is not fair, because the website automatically places a design entered by a third party on all products available. When calculating the compensation amount, the court just multiplied the number of forms with a picture automatically placed by the number of sizes and colors of all products presented. Attorney Volkov believes that in such case one can make a supposition or receive information about production capacities of the defendants regarding the manufacture of products with certain design, and use such supposed figures in the formulae for calculation of the compensation amount.
“I believe that the Supreme Court will mention that in calculation of a compensation amount for products offered for sale it is necessary either to rely on the proved amounts of products sold or offered for sale. Or to determine a compensation amount without taking into account the variants of color and size of the product form on which the design is placed”, Maxim Volkov said.
Volkov does not regard Vsemarket as an information intermediary. The expert notes that, unlike standard marketplaces, in the case at hand products are placed, manufactured and sold by different parties, and they are manufactured not by the same party which places the design and enters it into the website system, but by a third party determined by the marketplace. In such matters courts are inclined to follow the approach that compensation should be calculated based on the website line indicating the number of remaining products or products available for sale, notes Volkov. The expert designates this case as a unique one, because the system allows any random designer to give the trademark owner – in response for a click on the website (posting a picture) – the possibility to file an identical claim for RUB 3 mln.
So, online stores should be more attentive to compliance with intellectual property laws to avoid similar issues and retain their reputation on the Internet.
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