At the end of last year the Supreme Court of Estonia issued a second ruling in Stol-I AS v Liviko AS, a dispute concerning the unauthorized use of the trade mark STOLICHNAYA between 1994 and 1995.

In May 2007 the Supreme Court ruled that, where a trade mark licensee sues for trade mark infringement, it must first show that the trade mark owner at the date of filing the action (not at the time of the infringement) had refused to sue on its own behalf. The lower courts have since recognized the right of licensees to bring infringement actions and seek damages from an infringer in their own names, but the Supreme Court had yet to rule on issues concerning damages and time limits.

In its second decision the Supreme Court remitted the dispute to the Tallinn District Court for further consideration and ruled that, since the claim for damages in the original infringement action was based only on the sublicence fees allegedly payable to the licensee, the licensee could amend its damage claim in the further proceedings: the initial filing of its claim had suspended the limitation period in respect of the same type of damages.

Since the licensee’s right to sue for infringement results from the principle of legal succession, the licensee may seek damages as if it were the trade mark owner, claiming damages even for the period during which it was not yet established as a legal person and the licensing agreement had not been concluded. The licensee may claim damages as from the filing date of the trade mark application, provided that the trade mark had since been registered.

Source: note by AAA Legal Services in World Trademark Review.