Prudential Assurance Company Ltd v Prudential Insurance Company of America
| Jurisdiction | England & Wales |
| Judge | Lord Justice Potter,Lord Justice Chadwick : |
| Judgment Date | 12 March 2003 |
| Neutral Citation | [2003] EWCA Civ 327 |
| Docket Number | Case No: 2002/0972 |
| Court | Court of Appeal (Civil Division) |
| Date | 12 March 2003 |
[2003] EWCA Civ 327
Lord Justice Kennedy
Lord Justice Potter And
Lord Justice Chadwick
Case No: 2002/0972
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
(CHANCERY DIVISION)
(MR JUSTICE LADDIE)
Mr Geoffrey Hobbs QC and Mr Colin Birss instructed by Messrs Lovells of Atlantic House, 65 Holborn Viaduct, London EC1A 2FG for the Claimant/Respondent
Mr Michael Silverleaf QC and Mr Richard Vary (solicitor advocate) instructed by and of Messrs Linklaters of One Silk Street, London EC2Y 8HQ for the Defendant/Appellant
This is an appeal from an order made on 11 April 2002 by Mr Justice Laddie in trade mark proceedings brought by The Prudential Assurance Company Limited against The Prudential Insurance Company of America. For convenience I will refer to the parties respectively as "Prudential (UK)" and "Prudential (USA)".
For well over one hundred years each of the parties has carried on insurance business. They, and their respective group companies, now offer a wide range of financial services. Although in competition, Prudential (USA) has derived its business, principally, from the United States of America, while Prudential (UK) has operated mainly in the United Kingdom and other parts of Europe. Until recently, they had managed to co-exist without undue conflict under arrangements made in 1974. Those arrangements provided that Prudential (UK) would not use the "PRUDENTIAL" name or mark in the United States; and that Prudential (USA) would not use that name or mark in Europe or in certain countries of the Commonwealth. Prudential (UK) asserts that the arrangements constitute an agreement binding in law. Prudential (USA) accepts that the arrangements were made; but denies that they were intended to have, or do have, legal effect. That issue remains to be resolved in these proceedings at a trial; but it is not before the Court on this appeal. The issue on this appeal is whether – if the 1974 arrangements do not have legal effect —Prudential (UK) should be permitted to argue at a trial that, nevertheless, the use by Prudential (USA) of the mark "PRUMERICA" in Europe constitutes trade mark infringement.
That issue arises in the circumstances that the marks "PRU" and "PRUDENTIAL" are registered both as Community trade marks under the Community Trade Mark Regulation (Council Regulation 40/94/EEC) and as United Kingdom trade marks under the Trade Marks Act 1994 or its predecessor, the Trade Marks Act 1938. Prudential (UK) is the proprietor of those trade marks. But Prudential (USA) has been successful in obtaining registration of the mark "PRUMERICA" in a number of trade mark registries in Europe against the opposition of Prudential (UK). Registration of that mark has been upheld on appeal. Prudential (USA) relies, in particular, on the decision of the Cour d'Appel in Paris to uphold the rejection, by the French Trade Marks Registry, of Prudential (UK)'s opposition to registration of the mark "PRUMERICA" in France 1. It is said, in effect, that Prudential (UK) cannot be allowed to argue that an English court should reach an inconsistent result.
These proceedings
In these proceedings Prudential (UK) seeks to prevent Prudential (USA) from using the marks "PRUMERICA" and "PRUDENTIAL-BACHE" in the United Kingdom and other parts of Europe. It claims to be entitled to do so, first, on the basis that such use would be in breach of the 1974 agreement; and, second, on the basis that such use would infringe its registered trade marks.
The proceedings were commenced by the issue of a claim form on 30 November 2001; permission having been obtained from Mr Justice Jacob on 23 November 2001, under CPR 6.20, to issue for service out of the jurisdiction. Prudential (USA) acknowledged service, through its solicitors, on 27 December 2001; but, by notice dated 8 January 2002, applied to set aside the order of 23 November 2001 and to strike out or stay the claims. That application came before Mr Justice Laddie on 6 and 7 March 2002. His written judgment ( [2002] EWHC 534 (Ch), [2002] IP&T 781) was handed down on 11 April 2002.
The judge rejected the submission, made on behalf of Prudential (UK), that the challenge to jurisdiction must fail on the ground that, by applying to strike out the claims on substantive grounds, Prudential (USA) had submitted to the jurisdiction. The effect of his decision on that point, as he recognised at paragraph [20] of his judgment, was that, in order to uphold the order of 23 November 2001, it was for Prudential (UK) to show that it had a good arguable case in respect of the claims made. But, of course, if Prudential (UK) could discharge that burden, it would succeed not only in upholding the order for service out of the jurisdiction but also in its opposition to the application to strike out the claims on substantive grounds.
The application by Prudential (USA) to strike out the claims was made on three grounds: (i) that, having regard to the evidence before the court, there was no arguable case for any legally binding contract between the parties; (ii) that, in relation to alleged infringement by the use of the mark "PRUMERICA", the English court had no jurisdiction, or should decline to exercise any jurisdiction which it might have; and (iii) that, in relation to alleged infringement by the use of the mark "PRUDENTIAL-BACHE", there had been no use by Prudential (USA) which was inconsistent with a consent to use given by Prudential (UK).
The judge was persuaded – although, as he said at paragraph [43] of his judgment, "not without considerable misgivings" —that the contractual claim advanced by Prudential (UK) on the basis of the 1974 agreement "was sufficiently arguable to justify service out of the jurisdiction". He was satisfied, also, that he should not decide the contract issue as if on an application for summary relief. As he said, this was just the sort of case in which it would be unwise to embark on the "mini-trial" which would be necessary to decide that issue. There is no appeal from the judge's decision on those points.
Prudential (USA) accepted before the judge that unauthorised use of the mark "PRUDENTIAL-BACHE" might well infringe rights conferred on Prudential (UK) as proprietor of its registered marks, or some of those marks; but argued that the use which Prudential (USA) was making of the "PRUDENTIAL-BACHE" mark – that is to say, use in connection with investment management services and, in particular, in material on a web site "www.prudential-bache. com" was use to which Prudential (UK) had given consent. The judge took the view (at paragraph [86] of his judgment) that the varied nature of the business in which Prudential (USA) was and is involved was such that the borderline between those activities in relation to which it was to be allowed to use the mark "PRUDENTIAL-BACHE" and those in relation to which consent had not been given was imprecise and could not be determined on the correspondence before him. As he put it: "the precise scope of the mutual permissions given by each to the other is difficult to discern as is the question whether the activities advertised in the P-US web site fall within any relevant permission from P-UK". He was in no doubt that that was not an issue which could be resolved in summary proceedings. There is no appeal from the judge's decision on that point.
In the result —and as matters now stand – these proceedings will go to trial in any event on the 1974 contract issue and on the question whether the use of the mark "PRUDENTIAL-BACHE" is within any relevant consent. The issue yet to be determined is whether there should be a trial in relation to alleged infringement by the use by Prudential (USA) of the mark "PRUMERICA".
The contention advanced by Prudential (USA) before the judge, identified in ground (ii) of the application to strike out, was that:
"… the Court either does not have jurisdiction, or should decline to exercise any jurisdiction it may have pursuant to Article 21 of the Brussels Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters and Article 105(2) and/or 105(3) of the Council Regulation 40/94 on the Community Trade Mark and by means of estoppel res judicata;"
The judge encapsulated his understanding of that contention in two sentences at paragraph [46] of his judgment:
"In a nutshell, Mr Silverleaf's argument [on behalf of Prudential (USA)] is that the decision by the Cour d'Appel is binding in all States which are signatories to the Brussels Convention and where the same issue of confusing similarity arises. It follows that no infringement proceedings can be brought anywhere because of the outcome in the French registration proceedings."
The judge rejected that contention. But he gave Prudential (USA) permission to appeal to this Court.
The Community provisions as to jurisdiction in trade mark infringement cases
The challenge is to the jurisdiction of the United Kingdom courts to entertain, or to adjudicate upon, trade mark infringement proceedings. It is important to keep in mind that Prudential (UK) alleges infringement (i) of its Community trade marks ("CTMs") – of which there are two – and (ii) of its United Kingdom trade marks – of which there are seven. The judge explained the difference between CTMs and national trade marks in a passage, at paragraphs [51] and [52] of his judgment, which is not, I think, contentious and which I gratefully adopt....
To continue reading
Request your trial
-
Tavoulareas v Alexander G Tsavliris & Sons Maritime Company [QBD (Comm)]
...Aviation Lease BV v Civil Aviation Authority[1997] CLC 43. Prudential Assurance Co Ltd v Prudential Insurance Co of AmericaWLR[2003] 1 WLR 2295. Related proceedings Brussels Regulation Whether English court as court second seised should decline jurisdiction once Greek court as court first s......
-
Hearst Holdings Inc. v AVELA Inc.
...109. 27 In its form in the prior regulation to the current CTMR, Article 109 CTMR was considered by the Court of Appeal in Prudential Assurance v. Prudential Insurance [2003] EWCA Civ 327. At that time the provision was Article 105 of Council Regulation 40/94. The terminology used in Chadw......
-
AA v BB
...determination", (para 16) after referring to Internationale Nederlanden and the Court of Appeal's decision in Prudential Assurance Co Ltd v Prudential Insurance Co of America [2003] 1 WLR 2295. These authorities support the propositions set out in 67 What is set out in Dicey also accords w......
-
The London Steam-Ship Owners' Mutual Insurance Association Ltd v The Kingdom of Spain
...light of that decision by the court of trial, and that can be done by the House of Lords in due course.” 31 In Prudential Assurance Co Ltd v Prudential Insurance Co of America [2003] 1 WLR 2295, [2003] EWCA Civ 327 Chadwick LJ again recognised that the test of necessity was met in relatio......
-
Territorial overlaps in trademark law: the evolving European model.
...See Hearst Holdings Inc. v. A.V.E.L.A. Inc. [2014] EWHC (Ch) 1553; Prudential Assurance Co. Ltd. v. Prudential Ins. Co. of Am. [2003] EWCA (Civ) 327. (273) See Interflora, Inc. v. Marks & Spencer PLC [2013] EWHC (Ch) 1291, [paragraph][paragraph] 208-11. The use of this fiction masks nor......