Easy Rent a Car Ltd v Easygroup Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice David Richards,Lady Justice King,Lord Justice Lewison |
| Judgment Date | 20 March 2019 |
| Neutral Citation | [2019] EWCA Civ 477 |
| Docket Number | Case No: A3/2017/2973 |
| Court | Court of Appeal (Civil Division) |
| Date | 20 March 2019 |
[2019] EWCA Civ 477
Lord Justice Lewison
Lady Justice King
and
Lord Justice David Richards
Case No: A3/2017/2973
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (Ch)
His Honour Judge Hacon
HC-2016-003703
Royal Courts of Justice
Strand, London, WC2A 2LL
David Ivison (instructed by Ince Gordon Dadds LLP) for the Appellants
Stephanie Wickenden (instructed by Shoosmiths LLP) for the Respondent
Hearing date: 3 December 2018
Approved Judgment
Introduction
This appeal concerns the application of articles 29 and 30 of Regulation (EU) No 1215/2012 (the Judgments Regulation) to proceedings for trade mark infringement and passing off issued in England by the respondent against the appellants, a month after the appellants had commenced proceedings in Cyprus against the respondent. HH Judge Hacon, sitting as a Deputy High Court Judge, dismissed an application by the appellants to stay these proceedings (the English proceedings) under article 29, alternatively under article 30. The appellants appeal with permission granted by Floyd LJ.
The facts
The respondent is a company incorporated in England which is the registered proprietor of a large number of United Kingdom, European and other trade marks that combine the word “easy” with a second word that refers to key goods or services offered under the mark. The best known is probably “easyJet” but, for the purposes of this appeal, the most relevant marks are for “EASYRENTACAR” in respect of the hire and rental of motor vehicles and “EASYCAR” for the rental and hire of vehicles and information services relating to transportation services, including information services provided online from a computer database or the Internet. One of the marks takes the form of the word “easyCar” with a rectangular block orange background. The respondent or its licensees have, since 2000 or earlier, provided car rental services on a substantial scale under these marks, including online information services and advertisements.
The particulars of claim allege that from about May 2002, the first appellant, a company incorporated in Cyprus and owned by the second appellant, has carried on a car rental business in Cyprus under signs which are identical or similar to the marks owned by the respondent. It has also offered car rental services to the public on a website which uses the sign “EASYRENTACAR” and “easyRentaCar” on an orange background and which is directed to consumers in countries including the United Kingdom.
In January 2003, the respondent and three other group companies commenced proceedings in Cyprus against the appellants, alleging trade mark infringement and passing off, and the appellants filed a defence and counterclaim. In 2005, both the claim and the counterclaim were dismissed without any hearing on the merits or other determination. The appellants allege that the dismissal was the result of a settlement agreement reached between the parties which, by its terms, permitted the appellants to carry on their car hire business in the manner of which complaint is made by the respondent in the English proceedings. The respondent alleges that the agreement was no more than an agreement that both parties would abandon their claim and counterclaim with no order as to costs.
In February 2012, lawyers in Cyprus acting on behalf of the respondent wrote to the appellants, alleging infringements of trade marks and of other intellectual property rights. The appellants' lawyers responded, denying any infringement.
The respondent alleges that from about March 2013 the appellants added to the number of marks they were infringing on their website and that from about May 2014 they extended their infringing activities to their Facebook page.
In September 2016, English solicitors acting for the respondent wrote to the appellants, alleging infringements of their trade marks. The appellants replied, denying the allegations. Further correspondence followed.
On 24 November 2016, the appellants issued proceedings in the District Court of Nicosia, Cyprus, (the Cypriot Court) against, among others, the respondent (the Cypriot proceedings). The relief sought included: declarations that the appellants may use the phrase “easy rent a car” or similar phrases and accompanying drawings, colours or images as have previously been used in Cyprus and on their website; a declaration that the respondent (and the other defendants in the Cypriot proceedings) are estopped from asserting any rights they may have against the appellants' use of these phrases and accompanying drawings, colours or images; an injunction to prohibit any interference with the appellants' business; an injunction to prohibit the respondent from using in Cyprus or through their website the phrase “easy rent a car” or similar phrases; an order for specific performance of the settlement agreement which the appellants allege was made in 2005; and damages for breach of such agreement.
On 28 December 2016, the respondent issued the English proceedings in the High Court in London. It seeks relief in respect of alleged infringements of UK-registered marks and passing off. Unsurprisingly, the particulars of claim do not refer to the alleged settlement agreement and no part of the respondent's case is based on that agreement. However, the appellants have made clear that “the central plank” of their defence would be the terms of the alleged settlement agreement.
There has been one important development since the judge's decision. In September 2017, prior to the hearing below, the respondent issued an application in the Cypriot court to set aside the claim in the Cypriot proceedings, and service of the claim. The principal grounds, in summary, were that the appellants had not obtained an order for service of the proceedings out of the jurisdiction and that the proceedings disclosed no reasonable cause of action and were an abuse of the court's process. The application was still pending at the time of the hearing before Judge Hacon in October 2017.
The respondent subsequently succeeded in this application and, by an order made by the Cypriot Court on 22 May 2018, the claim was set aside. The grounds for the order, as summarised in a witness statement of the appellants' Cypriot lawyer, were that (i) the appellants had not demonstrated that they had a prima facie good cause of action and an arguable case against the respondent and (ii) they had failed to obtain leave, or valid leave, to serve the proceedings out of the jurisdiction. The orders granting leave to issue the proceedings and to serve the proceedings on the respondent were set aside.
Within the time allowed for doing so, the appellants filed an appeal against the Cypriot court's order. The appeal was served on the respondent on 6 September 2018. In the words of the appellants' Cypriot lawyer it is “a nice point” whether in these circumstances the District Court of Nicosia is still seised of the proceedings and, “for that reason and for the avoidance of doubt” he issued an application for a stay of the order of 22 May 2108 pending appeal. The District Court dismissed the application on 26 October 2018 on the grounds that the order did not impose any obligation or duty on the appellants and therefore could not be the subject of a stay under the applicable procedural rules. The position is therefore that the claim has been set aside but an appeal is pending. It is common ground that the appeal will not be heard for a substantial time, in the order of 3–4 years from the filing of the appeal.
An appeal court will not normally admit evidence of events which have occurred since the making of the order under appeal: R (Iran) v Secretary of State for the Home Department [2005] EWCA Civ 982, [2005] INLR 633 at [34]–[37]. An appeal is limited to a review of the decision of the lower court, unless either a practice direction makes different provision for a particular category of appeal (not relevant in this case) or the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing: CPR 52.21(1). As will appear, the striking-out of the Cypriot proceedings and the filing of an appeal by the appellants are capable of having a profound effect on the application of both articles 29 and 30 in this case. I am therefore of the view that this court should admit evidence of these events.
Article 29
Article 29 provides:
“1. Without prejudice Article 31(2), where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seized shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seized is established.
2. In different cases referred to in paragraph 1, upon request by a court seized of the dispute, any other court seized shall without delay inform the former court of the date when it was seized in accordance with Article 32.
3. Where the jurisdiction of the court first seized is established, any court other than the court first seized shall decline jurisdiction in favour of that court.”
It is common ground that the District Court of Nicosia was at the date of the judge's decision the court first seised for the purposes of article 29.
The issue before the judge was whether the Cypriot and English proceedings involved “the same cause of action” within the meaning of article 29. The events since the hearing mean that a second, but anterior, issue arises: is the Cypriot court now seised of the proceedings at all?
I will...
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