Crafts Group LLC v M/S Indeutsch International
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 26 July 2023 |
| Neutral Citation | [2023] EWHC 1914 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2020-000138 |
[2023] EWHC 1914 (IPEC)
HIS HONOUR JUDGE Hacon
Case No: IP-2020-000138
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Michael Edenborough KC (instructed by White & Black Limited) for the Claimant
Guy Hollingworth (instructed by Wiggin LLP) for the Defendant
Approved Judgment
This judgment was handed down remotely at 10.30am on 26 July 2023 by circulation to the parties or their representatives by e-mail and by release to the National Archives.
Introduction
This judgment is supplemental to that handed down in these proceedings on 16 June 2023 (“the Main Judgment”). It is given at the request of the defendants.
In an email dated 15 June 2023, the claimant's counsel sought permission from this court to appeal the Main Judgment. He identified two grounds:
“1. The Court should have found that, as there were no pending proceedings under EUTMR Article 124 as at IP Completion Day, this Court was not sitting as an EU trade mark Court prior to IP Completion Day and therefore has no jurisdiction after IP Completion Day over EU Trade Marks. Consequently, this Court has no jurisdiction to grant an application under EUTMR Article 132, or exercise any other power under the EUTMR.
2. By reason of the previous ground, the discretion to grant a stay on case management grounds was exercised on a flawed basis.”
I refused permission to appeal for the reasons stated in Form N460.
The claimant has since filed a Notice of Appeal in the Court of Appeal. Four grounds for permission to appeal are advanced. Grounds 1 and 3 are materially the same as those in the email of 15 June 2023 quoted above. Grounds 2 and 4 are new, each of which alleges a failure in the Main Judgment to give reasons.
My attention has been drawn by the defendants to the following guidance from the Court of Appeal in English v Emery Reimbold & Strick Ltd [2002] EWCA Civ 605. Lord Phillips MR, giving the judgment of the Court, said:
“[25] Accordingly, we recommend the following course. If an application for permission to appeal on the ground of lack of reasons is made to the trial judge, the judge should consider whether his judgment is defective for lack of reasons, adjourning for that purpose should he find this necessary. If he concludes that it is, he should set out to remedy the defect by the provision of additional reasons refusing permission to appeal on the basis that he has adopted that course. If he concludes that he has given adequate reasons, he will no doubt refuse permission to appeal. If an application for permission to appeal on the ground of lack of reasons is made to the appellate court and it appears to the appellate court that the application is well founded, it should consider adjourning the application and remitting the case to the trial judge with an invitation to provide additional reasons for his decision or, where appropriate, his reasons for a specific finding or findings. Where the appellate court is in doubt as to whether the reasons are adequate, it may be appropriate to direct that the application be adjourned to an oral hearing, on notice to the respondent.”
Although the claimant referred to English in its skeleton argument before the Court of Appeal, it has not sought additional reasons from this court. However, the defendants have. I will therefore expand on the reasons given in the Main Judgment. To maintain brevity, I will assume that this judgment is read together with the Main Judgment, including the relevant statutory provisions and the definitions of terms.
Jurisdiction under the Trade Mark Regulation
Ground 2 for permission to appeal made before the Court of Appeal is:
“… the Judge failed to give reasons for holding that the Court has jurisdiction under the EUTMR.”
The EUTMR is Regulation (EU) 2017/1001, referred to in the Main Judgment as “the Trade Mark Regulation”.
Before the departure of the UK from the EU
The Trade Mark Regulation creates the legal framework which governs EU trade marks. It explicitly leaves certain aspects of that governance to national law.
Art.123 of the Trade Mark Regulation requires Member States to designate national courts as EU trade mark courts. The (UK) Community Trade Mark Regulations 2006 (“the 2006 Regulations”) were made in the exercise of powers conferred on the Secretary of State by s.52 of the 1994 Act. Regulation 12 of the 2006 Regulations provided that in England and Wales, the High Court is designated as a Community trade mark court (now an EU trade mark court). This court, as a specialist list within the High Court, was therefore an EU trade mark court – at the least until IP completion day.
Art.124 of the Trade Mark Regulation (set out in the Main Judgment at [20]) gives to EU trade mark courts exclusive jurisdiction for the actions, counterclaims and applications for declarations listed in that article, among which are infringement actions:
“ and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks”.
Thus, if the national law of the Member State of an EU trade mark court allows actions for unjustified threats of infringement of EU trade marks, the EU trade mark court has jurisdiction over such actions, which will be determined according to its national law.
Regulation 6(1) of the 2006 Regulations made available under the laws of the UK an action of unjustified threats of proceedings for infringement of an EU trade mark. Such threats fell to be determined under the terms of s.21 of the 1994 Act:
“ 6. (1) The provisions of section 21 apply in relation to a Community trade mark as they apply to a registered trade mark.”
The change of name – Community trade mark to EU trade mark – introduced by the Trade Mark Regulation was never reflected in the 2006 Regulations, but it makes no difference.
It follows from the foregoing that when the claimant brought its claim in this court for unjustified threats on 11 December 2020, this court had jurisdiction over that claim as an EU trade mark court pursuant to art.124(a) of the Trade Mark Regulation and reg.6(1) of the 2006 Regulations. The merits of the claim are to be decided pursuant to s.21 of the 1994 Act.
After the departure of the UK from the EU
For the reasons given in the Main Judgment at [51] to [55], the jurisdiction of...
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