Slovenian entrepreneur was distributing Marc Jacobs Bang and Marc Jacobs Daisy perfumes to several stores in Slovenia. The perfumes’ packaging had no bar codes and/or serial numbers; they had either been removed or covered by blank labels. On genuine products, bar codes and serial numbers provide information about their production, such as time and place. This information also enables the tracking of genuine products through distribution channels and helps to distinguish original products from counterfeits.

Exclusive Licensee of the trademarks initiated an action for trademark infringement requesting (1) the prohibition of further infringement; (2) the publication of the judgment; (3) disclosure of the scope of infringement; and (4) the payment of damages. Licensee argued that because the bar codes and serial numbers had been removed they could not determine the true origin of the products.

The first-instance court held that the defendant must prove that the decoded products were genuine including that they had been put on the EU market with the holder’s or in this case licensee’s consent.  The defendant failed to meet this burden; therefore, the court found there was infringement of licensee’s trademark rights.

However, the first instance court refused most of the licensee’s damages claim, because licensee supposedly failed to prove the scope of the infringement necessary to calculate the amount of damages, which is the plaintiff’s burden in damages litigations.

The licensee filed an appeal with the Higher Court in Ljubljana, claiming it was impossible for them to obtain information and evidence on the full extent of defendant’s infringement. Therefore, such a burden should not be imposed on the licensee; on the contrary, the defendants in such cases should provide the relevant information and evidence. Otherwise infringers could easily escape paying damages simply by being passive in litigation. In the respective case the defendant failed to provide any information on the scope of infringement; therefore, they should be liable for the full amount of claimed damages.

The Higher Court in Ljubljana followed licensee’s arguments and reversed the first-instance judgment, awarding the licensee the full amount of claimed damages.

This judgment may have a significant impact on evolving Slovenian case law regarding the allocation of the burden of proof in infringement cases, making it much easier for the right holder’s to obtain appropriate damages.

Igor Šetinc – Slovenia – Defendant’s failure to disclose scope of infringement results in damages, WTR, 2016