The focus of this research is to analyse the trademark infringement damages system under art. 43 and 44 of the Trademark Law 17/2001, of December 7. Statutory damages regulated under the mentioned articles raise several important issues which are dealt in the thesis, whilst taking into consideration it’s belonging to the general law of damages. As a starting point, the study focuses on the available remedies to trade mark infringement. In particular, it refers to the circumstances that, according to the Trademark Law, must concur in order to a trademark owner to be compensated for damages.Monetary compensation may be awarded by a civil court or by a criminal court when the infringement is a criminal offense. This double possibility of claiming compensation for damages is disturbing, because each jurisdiction follows different criteria to quantify the damages. Civil courts apply the rules stated in Trademark law while criminal courts consider that those rules are merely a guiding. A trademark owner may claim damages to the trademark, in particular damage to reputation, goodwill and expenses incurred investigating the infringement, but also the loss of profit caused by the infringement. When the trademark owner claims the infringer damages for loss sustained (damnum emergens) and loss of profit (lucrum cessans), he faces similar problems to those of damage determination in general, without prejudice to the particularities of the nature of the trademark. However, art. 43 of the Trademark Law grants the trademark owner the possibility of assessing the damage in an abstract way, without regard to the actual loss of profit experienced by the claimant. In fact, the trademark owner may choose to claim the benefit obtained by the infringer through the illicit use of the trademark, or the amount that the infringer should have paid the trademark owner in order to lawfully use the trademark. In addition, the trademark owner is also allowed to choose to claim one percent of the infringer’s turnover obtained through the use of the trademark. The fact that the Trademark Law allows an abstract calculation of the damage does not relieve trademark owner of the duty to prove damages as a requirement to set the claim and assess damages according with art. 43 of the Trademark Law. Although art. 43 of the Trademark Law grants the trademark owner several options for assessing damages, the claimant may only opt for the calculation method that is appropriate to the manner in which damages have been manifested. This study examines the circumstances in which a trademark owner can opt for such abstract methods of calculating the damage, as well as the calculation guidelines available for each of the situations. Ultimately, we turn our attention to the legitimation in order to claim damages and the consolidations of damage actions. Regarding the legitimation of the plaintiff to claim damages we mainly focus on the problems related to the licenses and co-ownership of the trademark, which mainly affects the exercise of the damage calculation options available to the injured party, stated in Art. 43 of the Trademark Law. Finally, the research deals with consolidation actions both when several people claim on the bases of same infringement, as well as when a trademark owner claims damages arising out of the infringement of several trademarks or other intellectual property rights.
