By means of recent Judicial Order of December 2018, Colombia's Superintendence of Industry and Commerce (SIC) has clarified its position regarding indemnification of damages for violations perpetuated against the Industrial Property Regime. In this regard, the SIC was emphatic as to what should be understood by "damage" and "impairment," as concepts that must be adequately differentiated from one another. Therefore, while the mere infringement of the exclusive right of a trademark holder constitutes damage, the impairment was defined as the resulting consequence from such damage. In accordance with the foregoing, the SIC stressed the need to demonstrate both figures within each process.
In addition to the above, the SIC established the criteria, as well as the types of impairment, on the basis of which the indemnity must be calculated, once the existence of a certain damage and its consequent impairment have been demonstrated. That includes: 1) the actual damages and loss of profit, 2) the amount of the profits obtained by the infringer, and finally, 3) the price that the infringer would have paid for a license of use. The SIC also addressed the means for the quantification of damages, which can be selected by the right's holder – namely, the oath regarding estimation of damages or the system of preestablished compensations.
With basis on the preceding arguments, the SIC sanctioned the defendant, with the understanding that it made unauthorized use of trademarks under the ownership of the plaintiff. Consequently, the entity ordered the defendant to immediately cease the use of the referred brands from any means used to identify products and/or services for which said trademark was registered by its owner.
The analyzed decision is useful as the SIC has granted a broader protection to the holders of industrial property rights, considering the mechanisms that require the owners to demonstrate an infringement to their rights have been simplified, as well as the corresponding damages estimation.
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