The recent case of 32Red plc v WHG (International) Ltd and other companies concerned the infringement of rights protected by European Community trademarks (an EU wide trademark which circumvents the need to register the trademark in every European country where the name company trade). The Community trademark infringed in this case was the protected name of the well-known online casino, ‘32Red’. The Defendants` in this case were responsible for the domain name and new online casino operating under the name ‘32Vegas’.
The claim was brought on the basis that anyone who wrongly uses another’s property should be liable to pay damages. In an earlier judgment concerning only the issue of infringement, it was decided that infringement of 32Red’s Community trademarks had taken place.
In the more recent judgment (April 2013) concerning the level of damages to be awarded to 32Red, the Chancery division of the High Court decided the correct level of damages was in the sum of £150,000 to represent the likely cost of a licence fee permitting use of the protected trademark.
Only £150,000; this appears a drop in the ocean to an online casino and hardly worth bringing a trademark infringement action for. This is because the value of securing a judgment for trademark infringement isn’t in the monetary award, but in the declaration by the court that these rights have been infringed and, more importantly, making it known that these rights have been infringed. This was the issue at the crux of the earlier judgment determining liability for trademark infringement; 32Red requested, pursuant to Article 15 of the IP Enforcement Directive, the Defendants’ publish the judgment on their websites to ensure customers were aware of the infringement and to resolve any issues of brand confusion.
Brand confusion is the issue here. Brand identity and consumer awareness from marketing is what generates custom and profits and a lot of value is placed on this by businesses. 32Red is a well-marketed online casino and there is a lot of value to be lost from marketing if it is confused with 32Vegas. It is undoubtedly the case the money lost, because of confused customers using 32Vegas instead of 32Red, is worth far more than the award of £150,000 in damages.
It is important to note that in the present case 32Vegas was rebranded prior to the infringement trial otherwise it is likely that 32Red would have sought a final injunction restraining 32Vegas from trading under that name.
A judgment on infringement is nonetheless important because it not only affirms a breach of 32Red’s intellectual property rights but it also enforces to other potential free-riders that rights will be enforced therefore serving as a deterrent to other potential infringers.
