The Study on the the Infringer’s Profits and the Reasonable Royalty in Trademark Infringement Cases

• Main Authors: Fan, Jr-Da, 范智達
• Other Authors: Wang, Min-Chiuan
• Format: Others
• Language: zh-TW
• Published: 2019
• Online Access: http://ndltd.ncl.edu.tw/handle/w86rjh

博士 === 國立交通大學 === 科技法律研究所 === 107 === A trademark holder who brought an action at law for damages could seek to recover an accounting of the infringer’s profits as a surrogate measure of the trademark holder’s own injury for lost profits on diverted sales. By "compensating" the loss of the trademark holder as the theoretical basis of an accounting of the infringer’s profits, it is impossible to fully estimate all the damage that the trademarks holder may suffer. Monetary relief was designed originally to compensate for the trademark holder’s losses where the infringer competed with the trademark holder. Monetary relief now also serves the rationales of deterrence and preventing unjust enrichment, rationales that are not limited to contexts in which the infringer competes with the trademark holder. Once used only in limited contexts as a surrogate for profits on sales that a competing infringer diverted from the trademark holder, an accounting is now used in expanded contexts to deter infringement and prevent unjust enrichment. The monetary relief considerations for the infringer’s profits of trademark infringement cases in Taiwan should also be extended to the purpose of deterrence infringement and preventing unjust enrichment in order to examine the reasonable amount of monetary relief. A trademark holder suing at law was entitled to recover for all harm suffered due to the defendant’s infringement. The evidence could support an award based on harm to the plaintiff for, including an established royalty, or information that might establish a reasonable royalty. The IP court in Taiwan considers that the plaintiff who seek for a remedy at law using a reasonable royalty must have to prove an established royalty damage figure where the value of a trademark had been set through a series of existing licenses, which is established royalty rates. The court cannot refuse the plaintiff's request for monetary relief based on reasonable royalty because the plaintiff cannot submit relevant evidence to prove that it was actually charged from established royalty rates. Under the comprehensive consideration of the compensation function and the requirements of deterrence infringement and preventing unjust enrichment, it is necessary to propose a reasonable calculation formula which is objectively trustworthy and can alleviate the plaintiff's the burden of evidence. The formula for calculating the reasonable royalty for the economic litigation should increase the reasonable royalty opportunity for monetary relief. Courts should allow the use of a viable method or formula to calculate a reasonable royalty in trademark infringement cases because, if properly used, the viable method or formula just like NBS adequately applies the facts of each specific case, is grounded in sound, unmanipulable economic theory, and is more impartial than the Georgia-Pacific analysis. A proper application of the viable method or formula may takes into account the relative bargaining positions of both parties, and adjusts the royalty rate accordingly.