The High Court has refused to order a plaintiff (Aldi) to elect between a claim in damages and a claim for an account of a defendant’s (Dunnes Stores) profits at the discovery stage in a trade mark infringement case. The application arose in the course of a successful claim by Aldi against Dunnes that it engaged in misleading comparative advertising and infringed Aldi’s trade marks.

Mr. Justice Cregan held that a plaintiff is entitled to be fully informed before electing between an award of damages based on financial loss to the plaintiff and an award of the profits wrongfully obtained by the defendant. Dunnes had argued that Aldi was required to elect between the two remedies before discovery. However, Mr. Justice Cregan found that at that stage, the defendant would have insufficient information to make an informed choice. He therefore ruled that Aldi may exercise its right of election at the conclusion of the hearing, so long as that did not unreasonably delay proceedings.

Further, Mr. Justice Cregan held that an election does not mean that the plaintiff abandons their other claim. He explained that an account of profit is an equitable remedy and as such is at the discretion of the court. Therefore, although Aldi could elect for an account of profit, it would not in itself be determinative of the issue. If a plaintiff elects to claim for an account of profits and the Court rejects that claim, the Court can still award damages for lost profit.

The Judge also found that while a plaintiff is required to elect between a claim in pecuniary damages (for quantifiable loss, i.e. money) and the defendant’s profits, it is not required to elect between a claim in pecuniary damages and non-pecuniary damages (for non-quantifiable loss such as goodwill or reputation). As one claim is economic and the other is not, there is no danger of the plaintiff being compensated “on the double” for the same injury and therefore no reason for an election. Additionally, because it would be difficult for a plaintiff to quantify loss of reputation or goodwill, it would be unfair to expect them to elect between the two.

The case is a significant development in Irish trade mark law in that it clarifies the precise nature, logic and application of the rule requiring an election in trade mark infringement cases.

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Contributed by Brian McElligott