1) Nvidia Corporation (a company incorporated in Delaware) and Others v Hardware Labs Performance Systems Inc. (a company incorporated in the Philippines)

JurisdictionEngland & Wales
JudgeMr Justice Mann
Judgment Date06 December 2016
Neutral Citation[2016] EWHC 3135 (Ch)
Date06 December 2016
CourtChancery Division
Docket NumberCase No: HC-2016-000514

[2016] EWHC 3135 (Ch)



Royal Courts of Justice

Rolls Building, 7 Rolls Buildings

Fetter Lane, London EC4A 1NL


Mr Justice Mann

Case No: HC-2016-000514

1) Nvidia Corporation (a company incorporated in Delaware)
2) Nvidia Limited
3) Nvidia Development UK Limited
4) Nvidia Technology UK Limited
5) Nvidia Gmbh (a company incorporated in Germany)
6) Nvidia Development France Sas (a company incorporated in France)
7) Nvidia Dutch BV (a company incorporated in the Netherlands)
8) Nvidia Arc Gmbh (a company incorporated in Germany)
9) Nvidia, Helsinki OY (a company incorporated in Finland)
10) Nvidia Italy Srl (a company incorporated in Italy)
11) Nvidia Singapore Development Pte Ltd (a company incorporated in Singapore)
12) Nvidia Singapore Pte Ltd (a company incorporated in Singapore)
Hardware Labs Performance Systems Inc (a company incorporated in the Philippines)

Mr Philip Roberts (instructed by Olswang LLP) for the Claimants

Mr Andrew Norris (instructed by Edwin Coe LLP) for the Defendant

Hearing date: Tuesday, 8 th November 2016

Mr Justice Mann



This is a trade mark action in which the claimants seek injunctive and damages relief in respect of what is said to be a groundless threat of proceedings for infringement of a trade mark, and also claim a declaration of non-infringement. There are three applications before me. The first is a defendant's summary judgment and strike-out application in relation to the groundless threats part of the action. At the heart of the application is the question of whether a letter sent by German attorneys to the first claimant ("Nvidia Corp") is a threat to take infringement proceedings in this jurisdiction (as opposed to another jurisdiction). That is a matter of construction of the letter in question. The second application is one by the claimants seeking to stay their own action (whether or not the groundless threats claim survives) pending the determination of invalidity proceedings which it has bought in the European Intellectual Property Office, as it is now called ("EUIPO"). The third is an application by the defendant to transfer the claim to the Intellectual Property Enterprise Court ("IPEC") or have it allocated to the shorter trial scheme.


Mr Andrew Norris appeared for the defendant; Mr Philip Roberts appeared for the claimants.

The parties, their marks and other proceedings


Nvidia Corp is the parent company of the Nvidia group, of which the other claimants are subsidiaries based in various jurisdictions around the world. Three of them are English; two of them are German (the fifth and eighth defendants) but only the fifth defendant has a significance for present purposes and I shall ignore the eighth. The group manufactures and trades in graphics processing units (hardware for generating graphics in computers) and in that connection uses (or claims to have used) the designations GTX and GTS in connection with multiple products.


The defendant is a Philippine corporation which claims to be a pioneer in the computer watercooling industry. It is currently the registered proprietor of three European trade marks ("EUTMs") registered in various classes, the identity of which does not matter for present purposes. The marks are GTX, GTS and GTR.


On or about 2 nd February 2016 the first, second, fifth and twelfth claimants brought invalidity proceedings in the EUIPO in respect of the three registered marks, and on the same day the same claimants brought revocation proceedings in the EUIPO in respect of the GTX mark.

The threat


The threat on which this action is based was contained in a letter from the defendant's German attorneys (Lex Dellmeier), written in English, dated 18 th January 2016 and addressed to Nvidia Corp at its California address. It is a long letter and for the purposes of this application it is necessary to set out extensive parts of it because what it does not say is said to be as significant as what it does say.


It is headed:

"Hardware Labs Performance Systems Inc … NVIDIA Corporation

Community trade mark application 'GTX'

DEADLINE: 3 February 2016"

The letter goes on to introduce themselves, and their client as a pioneer in the computer watercooling industry and says:

"Our client is the proprietor of Community trademark (CTM) No. 008578106 'GTX' (word mark)."

and then describes the classes and provides a printout.


The letter then goes on as follows, omitting irrelevant detail:

"2. As you are already well aware, our client had timely filed opposition based on his above referenced CTM against your CTM application No. 011947082 'GTX' …

Following negotiations between your representatives and our client's US counsel, which unfortunately have as yet not been successful and meanwhile come to a halt, said opposition proceedings were terminated following your withdrawal of your above-mentioned CTM application….

3. Our client has now become aware that – despite the withdrawal of your above-referenced CTM application 'GTX' – you and your affiliated company NVIDIA GmbH [fifth defendant], Germany, are using the term 'GTX' as a trademark …

3.1 For example, your German language website www.nvidia.de shows use of the term 'GTX' together with the 'TM' symbol at various places across the site for PC gaming systems [and a screenshot is then displayed]

3.2 In addition, you are using the sign 'GTX' on your website at [URL of German website with .de domain designation, with various screenshot details].

3.3 By way of example, we also refer to the website at [further German website with a .de domain]…

3.4 Further, you are using the sign 'GTX' also for laptops as apparent for example from the website at [a further .de URL]…

5. All websites under the domain nvidia.de feature a copyright notice referring to your company i.e. 'Copyright © 2015 NVIDIA Corporation', including the legal notices section. It is therefore clear that the content of the website has been fed to your German associated company as the proprietor of the respective domain by you and that the site has been set up and is being run at your instigation.

In addition, from the legal notices section of the site it is evident that you control which trade marks and how these are being used by any NVIDIA company worldwide. This even more so since you – as apparent from the respective trade mark registers – are not only the proprietor of all NVIDIA's trademark applications and registrations worldwide, but also were the applicant of the corresponding CTM 'GTX' that has meanwhile been withdrawn.

The use of the term 'GTX' on the German language website www.nvidia.de is, therefore, attributable to you.

6. Following from the above and irrespective of the existence of a danger of first infringement because of the filing of your CTM application 'GTX', your use of the term 'GTX' as described above clearly infringes our client's CTM 'GTX' pursuant to Art. 9 Para. 1 lit. b CTMR. Given the high similarity up to identity of the signs as well of the goods under comparison and taking into account the at least average distinctiveness of our client's earlier trademark, there exists a considerable risk of confusion on the part of the public, including the risk that the public may associate the sign and the mark.

Against this background, there is no doubt that a likelihood of confusion exists on behalf of the public and, thus, your use of the 'GTX' gives rise to, inter-alia, claims for injunctive relief (Art 9 Para 1 GMV in conjunction with Art 102 Para 1 CTMR), compensation (Art 102 in conjunction with Sec. 125 b Para 1, Sec 14 Para 2 No 1 and 2, Sec 14 Para 6 German Trademark Act) and information (Art 102 in conjunction with Sec 125 b Para 1, Sec 14 Para 2 No 1 and 2, Sec 19 Para 1 German Trademark Act).

7. Therefore we have to request you in the name and on behalf of our client to execute and send to us a Cease and Desist-Declaration with a penalty clause until

3 February 2016

at the latest. In this regard, you may use the draft declaration as enclosed in Attachment 8.

Further, we expect to receive the information requested according to Para 3 of the enclosed draft Cease and Desist-Declaration on or before

17 February 2016

should we not receive the requested Declaration on or before the given deadline or in the event that it is incomplete, we will recommend to our client then bringing legal action immediately…."


References to legislation in paragraph 6 of the letter, apart from the short references to the CTMR, are, as appears in the extract, references to German legislation operating locally. The letter records that it has various attachments, including excerpts from the register, printouts of a German (.de domain) website and the proposed "cease and desist declaration". That proposed declaration reads:

"Herewith, the undersigned NVIDIA Corporation, 2701 San Tomas Expressway, Santa Clara, California 95050, USA — in the following referred to as "NIVIDIA" [sic] — undertakes vis-à-vis Hardware Labs Performance Systems Inc, 39 Don Ramon, Talayan Village, Quezon City (1104), Metro Manila, Philippines – in the following referred to as 'Hardware Labs' –

1 to cease and desist from using in the course of trade in the European Union signs featuring the term [list of marks]

2 to pay a suitable penalty for each single case of culpable violation of the obligation as provided for under Sec 1 of this Declaration, the amount of which shall be determined at the discretion of Hardware Labs and, if a conflict arises, the equitableness of which shall be reviewed by the competent Court;

[And undertaking to provide information about origin and distribution]."

The parties' cases on this application, in outline


In outline, the parties' respective cases on this application are as follows. The defendant says that...

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