Easygroup Ltd v Beauty Perfectionists Ltd
| Jurisdiction | England & Wales |
| Judge | Sir Julian Flaux C |
| Judgment Date | 17 December 2021 |
| Neutral Citation | [2021] EWHC 3385 (Ch) |
| Docket Number | Case No: IL-2020-000032 |
| Court | Chancery Division |
[2021] EWHC 3385 (Ch)
Sir Julian Flaux CHANCELLOR OF THE HIGH COURT
Case No: IL-2020-000032
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERT COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Royal Courts of Justice
Strand, London, WC2A 2LL
Stephanie Wickenden (instructed by Stephenson Harwood LLP) for the Claimant
James Abrahams QC (instructed by TLT LLP) for the Defendants
Hearing date: 4 November 2021
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE CHANCELLOR OF THE HIGH COURT
Introduction
The defendants apply by Application Notice dated 9 July 2021 to strike out those parts of the claimant's claims in these proceedings which seek an injunction and other remedies outside the United Kingdom, on the basis that even though the present proceedings were pending as at 31 December 2020 the date when the United Kingdom left the European Union, referred to in the relevant legislation as “exit day” or “IP completion day”, this Court no longer has jurisdiction to grant a pan-EU injunction or other remedies in respect of alleged infringement of EU trade marks (“EUTMs”).
The application raises the issue whether as a consequence of the relevant statutory instrument, the Trade Marks Amendment etc (EU Exit) Regulations 2019 (SI 2019 No. 269) hereafter referred to as “the 2019 Regulations” the relief which the Court can grant in relation to EUTM infringement proceedings is limited to an injunction or other relief having effect within the jurisdiction, even though when the proceedings were issued on 5 March 2020, the Court had jurisdiction to grant a pan-EU injunction.
Factual background
Since the issue raised is a question of law it is only necessary to set out the factual background briefly. In these proceedings, the claimant, an English registered company domiciled in the United Kingdom, is the owner of a number of brands, the most well-known of which is “easyjet.” It alleges that the defendants' online sales of cosmetic and beauty products under the name “easyCOSMETICS” infringe its IP rights. The first and second defendants are English registered companies and thus domiciled in the United Kingdom and the third defendant who is a director of those companies, although domiciled in the United States of America, has an establishment in the United Kingdom by virtue of that domicile. However, the defendants' case is that their business is principally focused on Germany and Austria and that it has never carried out any business activity in the United Kingdom.
The relevant statutory framework
EU Regulation 2017/1001 regulates EUTMs. Chapter X of that Regulation is headed “Jurisdiction and Procedure in Legal Actions relating to EU Trade Marks”. Article 123 provides for Member States to designate national courts which have the functions of EU trade mark courts under the Regulation. Under regulation 12 of the Community Trade Mark Courts Regulations 2006 (“the 2006 Regulations”) as amended, the EU trade mark courts in England and Wales are the High Court and the county courts at what are now the seven regional Business and Property Court centres. Article 124 of EU Regulation 2017/1001 provides that EU trade mark courts will have exclusive jurisdiction for all infringement actions relation to EUTMs.
Article 125 is headed “International Jurisdiction” and provides:
“1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EU) No 1215/2012 applicable by virtue of Article 122, proceedings in respect of the actions and claims referred to in Article 124 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.
4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
(a) Article 25 of Regulation (EU) No 1215/2012 shall apply if the parties agree that a different EU trade mark court shall have jurisdiction;
(b) Article 26 of Regulation (EU) No 1215/2012 shall apply if the defendant enters an appearance before a different EU trade mark court.
5. Proceedings in respect of the actions and claims referred to in Article 124, with the exception of actions for a declaration of non-infringement of an EU trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act referred to in Article 11(2) has been committed.”
Article 126 headed “Extent of jurisdiction” provides as follows:
“1. An EU trade mark court whose jurisdiction is based on Article 125(1) to (4) shall have jurisdiction in respect of:
(a) acts of infringement committed or threatened within the territory of any of the Member States;
(b) acts referred to in Article 11(2) committed within the territory of any of the Member States.
2. An EU trade mark court whose jurisdiction is based on Article 125(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.”
Article 127.1 provides that EU trade mark courts shall treat an EUTM as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. Article 128 then deals with counterclaims:
“1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation.
2. An EU trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office [the European Union Intellectual Property Office or “EU IPO”] relating to the same subject matter and cause of action and involving the same parties has already become final.
3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law.
4. The EU trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the EU trade mark has been filed shall not proceed with the examination of the counterclaim, until either the interested party or the court has informed the Office of the date on which the counterclaim was filed. The Office shall record that information in the Register. If an application for revocation or for a declaration of invalidity of the EU trade mark had already been filed before the Office before the counterclaim was filed, the court shall be informed thereof by the Office and stay the proceedings in accordance with Article 132(1) until the decision on the application is final or the application is withdrawn.
5. Article 64(2) to (5) shall apply.
6. Where an EU trade mark court has given a judgment which has become final on a counterclaim for revocation or for a declaration of invalidity of an EU trade mark, a copy of the judgment shall be sent to the Office without delay, either by the court or by any of the parties to the national proceedings. The Office or any other interested party may request information about such transmission. The Office shall mention the judgment in the Register and shall take the necessary measures to comply with its operative part.
7. The EU trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the EU trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 132(3) shall apply.”
Article 130 is headed “Sanctions” and provides:
“1. Where an EU trade mark court finds that the defendant has infringed or threatened to infringe an EU trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the EU trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.
2. The EU trade mark court may also apply measures or orders available under the applicable law which it deems appropriate in the circumstances of the case.”
Article 132 is headed “Specific rules on related actions” and provides:
“1. An EU trade mark court hearing an action referred to in Article 124 other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been...
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