AMS Neve Ltd v Heritage Audio S.L.
| Jurisdiction | England & Wales |
| Judge | Lord Justice Lewison,Lord Justice Kitchin |
| Judgment Date | 01 February 2018 |
| Neutral Citation | [2018] EWCA Civ 86 |
| Docket Number | Case No: A3/2017/4345 |
| Court | Court of Appeal (Civil Division) |
| Date | 01 February 2018 |
[2018] EWCA Civ 86
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
EU TRADE MARK COURT
HIS HONOUR JUDGE HACON (sitting as a Judge of the High Court)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Lewison
and
Lord Justice Kitchin
Case No: A3/2017/4345
Jonathan Moss (instructed by Pannone Corporate LLP) for the Appellants
Jacqueline Reid (instructed by Clarke Willmott LLP) for the Respondents
Hearing date: 7 December 2017
Judgment Approved
This is an appeal by the claimants against that part of the order of His Honour Judge Hacon made on 1 November 2016 in which he declared that the Intellectual Property and Enterprise Court (the “IPEC”), in its capacity as an EU trade mark court, had no jurisdiction to hear a claim by the claimants against the defendants for infringement of EU trade mark No. 1 108 063 (“the 063 EU trade mark”) arising from the use by the defendants of signs identical with or similar to that trade mark in the UK.
The background
The first claimant, AMS Neve, is an English company which makes a range of audio equipment and sells and supplies that equipment in the UK and elsewhere. The second claimant, BW Trustees, is established in England and is the trustee of the AMS Neve executive pension scheme. The third claimant, Mr Crabtree, is a director of and shareholder in AMS Neve. BW Trustees and Mr Crabtree are the owners of the 063 EU trade mark and two UK registered trade marks. All of these trade marks are exclusively licensed to AMS Neve.
The first defendant, Heritage Audio, is a Spanish company which sells and supplies audio equipment in Spain and, so the claimants assert, elsewhere. It has a website, the Heritage Audio website, which the claimants say is targeted at the UK and the wider EU market. The second defendant, Mr Arribas, is domiciled in Spain and is the sole director of Heritage Audio.
In these proceedings, which were issued on 15 October 2015, the claimants contend that the defendants have infringed their registered trade marks and have passed off their products as and for those of the claimants by advertising, offering and exposing for sale and selling and supplying in the UK imitations of the AMS Neve products under and by reference to signs which are identical with or confusingly similar to each of the claimants' registered trade marks. In support of this allegation the claimants rely upon, among other things, the contents of the Heritage Audio website; the contents of a Heritage Audio Facebook and Twitter presence; an invoice issued by Heritage Audio to an individual in London in respect of the supply of audio equipment; a chain of emails between Mr Arribas and a retailer in London concerning the potential supply by the defendants of audio equipment to that retailer; and the contents of a telephone conversation between a solicitor acting for the claimants and what the claimants contend was a UK distributor of the defendants' products called SX Pro.
As for the Heritage Audio website, the claimants point to, among other things, screen shots displaying for the purposes of trade audio equipment under and by reference to the signs complained of; the fact that the contents of the website are written in English; a section entitled “where to buy” which lists distributors in various countries including SX Pro in the UK; terms of sale which make it clear that the defendants accept orders from “the European Community” and will ship to countries within the EU; and a “frequently asked questions” page which includes the following sections:
“ How can I place an order?
Once you've decided to purchase one of our products, you can place an order using PayPal. PayPal will guide you through the buying process and will offer you different paying methods. You may use your PayPal account or a credit card.
You can also send us your orders to sales@heritageaudio.net. We will confirm your order and provide you with further details. Orders from the European Community where an exemption applies must include a valid VAT Registration number and must be placed by email.”
“ What kind of shipping method do you use?
We only ship our goods using UPS or FedEx. Shipping fees cover our shipping costs, package, labour and insurance. Check our “Terms and Conditions” file to find out more about delivery times and fees.”
For their part, the defendants do not dispute that they have used the signs complained of but maintain that they have only ever sold their products in Spain and that, although it is true that their products can be bought through independent outlets in other territories, including the UK, they have never themselves advertised, offered for sale, sold or supplied any products in the UK. They contend they have never appointed a UK distributor and that the parts of the website upon which the claimants rely are obsolete.
On 3 May 2016 the defendants issued an application pursuant to CPR Part 11 for a declaration that the IPEC did not have jurisdiction to try the claim. That application came on for hearing before Judge Hacon on 27 July and 11 October 2016.
The judgment of HH Judge Hacon
In his judgment given on 18 October 2016 ( [2016] EWHC 2563 (IPEC)), Judge Hacon found on the evidence before him that the claimants had established at least a good arguable case first, that the Heritage Audio website was directed and, I would infer, targeted at the UK among other territories; and secondly, that Heritage Audio had, through this website, advertised and offered its goods for sale in the UK under and by reference to the signs complained of.
The judge also found that the claimants had established a good arguable case that Mr Arribas was liable as a joint tortfeasor for any acts of Heritage Audio in the UK in respect of which the court had jurisdiction.
The next issue was jurisdiction. Here the judge began with the claims for infringement of the UK trade marks and passing off. He held that the IPEC did have jurisdiction to hear these claims pursuant to the special jurisdiction provisions of Article 7 of Regulation (EU) No 1215/2012 of 12 December 2012 (the “Brussels Regulation (recast)”). Although the defendants were domiciled in Spain, they could be sued in the courts of the place where the damage resulting from their tortious acts had occurred and, in the case of the national intellectual property rights in issue, the place where the damage had occurred was the place where the rights subsisted. The UK trade marks and the right to protect goodwill and prevent passing off subsisted in the UK and so the IPEC did have jurisdiction in respect of these claims. The defendants have not appealed against this finding or the judge's consequential order.
The judge then turned to the claim for infringement of the 063 EU trade mark. He held that the position was governed, not by the Brussels Regulation (recast) but by Council Regulation (EC) No 207/2009 on the Community trade mark (codified version) (the “CTM Regulation (codified version)”) as amended by Regulation (EU) No 2015/2424 of the European Parliament and Council. Here, focusing his attention on the Heritage Audio website and Article 97(5), the provision upon which the claimants relied, the judge held that only the courts of the place where the defendants had taken steps to put the offending signs on the website or had taken a decision to that effect had jurisdiction to hear the claim. That place was Spain and accordingly the IPEC had no jurisdiction. He made a declaration to this effect and it is against this part of his order that the claimants now appeal.
The appeal
The claimants contend on this appeal that the judge has failed properly to understand and apply the provisions of the CTM Regulation (codified version) and that had he done so he would have found that the IPEC did have jurisdiction to hear the claim for infringement of the 063 EU trade mark. Alternatively, they invite us to make a reference to the Court of Justice for a preliminary ruling as to the proper interpretation of the CTM Regulation (codified version) and its application in circumstances such as those the subject of these proceedings.
The defendants respond that the judge came to the right conclusion and that he did so for the right reasons. They also contend that the correctness of the judge's conclusion is confirmed by more recent authority and that it is neither necessary nor appropriate to refer any question to the Court of Justice.
In addressing these arguments it is helpful to have in mind at the outset the key parts of the legislative framework governing jurisdiction. The Brussels Regulation (recast), which replaced Council Regulation (EC) No 44/2001 (the “Brussels Regulation”), sets out general provisions concerning jurisdiction in Section 1. Article 4(1) of that section (formerly Article 2(1) of the Brussels Regulation) provides:
“Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.”
Special jurisdiction provisions are contained in Section 2. Article 7(2) of that section (formerly Article 5(3) of the Brussels Regulation) provides:
“7. A person domiciled in a Member State may be sued in another Member State:
…
(2) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;”
Jurisdiction in respect of EU trade marks is governed by a different regime. The CTM Regulation (codified version) codified the earlier Council Regulation...
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...Audio SL [2017] FSR 16, [2016] EWHC 2563 (IPEC), per HHJ Hacon at paragraph 25; AMS Neve Ltd v Heritage Audio SL [2018] FSR 23, [2018] EWCA Civ 86, per Kitchin LJ (as he then was) at paragraph 10. In the case of a claim for infringement of a national trade mark the place where the damage oc......