Aggravated, Exemplary and Restitutionary ... - Law Commission
Aggravated, Exemplary and Restitutionary ... - Law Commission
Aggravated, Exemplary and Restitutionary ... - Law Commission
Create successful ePaper yourself
Turn your PDF publications into a flip-book with our unique Google optimized e-Paper software.
The classic statement in an English case of the purpose of an account of profits<br />
was made by Slade J in My Kinda Town Ltd v Soll, 212<br />
in which the plaintiffs claimed<br />
that the defendants were passing off their chain of restaurants as the plaintiffs’.<br />
Slade J said, “The purpose of ordering an account of profits in favour of a<br />
successful plaintiff in a passing off case ... is to prevent an unjust enrichment of the<br />
defendant”. 213<br />
1.21 In Colbeam Palmer Ltd v Stock Affiliates Pty Ltd, 214<br />
an infringement of trade mark<br />
case, Windeyer J said the following:<br />
The distinction between an account of profits <strong>and</strong> damages is that by<br />
the former the infringer is required to give up his ill-gotten gains to the<br />
party whose rights he has infringed: by the latter he is required to<br />
compensate the party wronged for the loss he has suffered. The two<br />
computations can obviously yield different results, for a plaintiff’s loss<br />
is not to be measured by the defendant’s gain, nor a defendant’s gain<br />
by the plaintiff’s loss. Either may be greater, or less, than the other. If<br />
a plaintiff elects to take an inquiry as to damages the loss to him of<br />
profits which he might have made may be a substantial element of his<br />
claim ... But what a plaintiff might have made had the defendant not<br />
invaded his rights is by no means the same thing as what the defendant<br />
did make by doing so ... [T]he account of profits retains the<br />
characteristics of its origin in the Court of Chancery. By it a defendant<br />
is made to account for, <strong>and</strong> is then stripped of, profits he has made<br />
which it would be unconscionable that he retain. These are profits<br />
made by him dishonestly, that is by his knowingly infringing the rights<br />
of the proprietor of the trade mark. This explains why the liability to<br />
account is still not necessarily coextensive with acts of infringement.<br />
The account is limited to the profits made by the defendant during the<br />
period when he knew of the plaintiff’s rights. So it was in respect of<br />
common law trade marks. So it still is in respect of registered trade<br />
marks ... I think that it follows that it lies upon a plaintiff who seeks an<br />
account of profits to establish that profits were made by the defendant<br />
knowing that he was transgressing the plaintiff’s rights. 215<br />
1.22 Turning to the statutory intellectual property torts, it is laid down in statute that an<br />
account of profits may be ordered for infringement of a patent, 216<br />
infringement of<br />
copyright, 217<br />
infringement of design right, 218<br />
<strong>and</strong> infringement of performer’s<br />
property rights. 219<br />
Statutory provisions further lay down that the st<strong>and</strong>ard of fault<br />
211 Gillette UK Ltd v Edenwest Ltd [1994] RPC 279.<br />
212 [1982] FSR 147, reversed on liability [1983] RPC 407.<br />
213 [1982] FSR 147, 156. See also Potton Ltd v Yorkclose Ltd [1990] FSR 11 (infringement of<br />
copyright).<br />
214 (1968) 122 CLR 25 (HCA).<br />
215 (1968) 122 CLR 25, 32, 34-35.<br />
216 Patents Act 1977, s 61(1)(d)<br />
217 Copyright, Designs <strong>and</strong> Patents Act 1988, s 96(2).<br />
218 Copyright, Designs <strong>and</strong> Patents Act 1988, s 229(2).<br />
219 Copyright, Designs <strong>and</strong> Patents Act 1988, s 191I(2).<br />
34