Walton International Ltd v Verweij Fashion BV
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 28 June 2018 |
| Neutral Citation | [2018] EWHC 1608 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2016-002488 |
| Date | 28 June 2018 |
[2018] EWHC 1608 (Ch)
Mr Justice Arnold
Case No: HC-2016-002488
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Simon Malynicz QC and Andrew Lomas (instructed by Lewis Silkin LLP) for the Claimants
Charlotte May QC and Jaani Riordan (instructed by Bristows LLP) for the Defendant
Hearing dates: 11–15 June 2018
Judgment Approved
Contents
| Topic | Paragraphs |
| Introduction | 1 |
| The Trade Marks | 2–3 |
| The sign complained of | 4 |
| The Claimants' notice of partial discontinuance and the | 5–28 |
| Defendant's application to set it aside | |
| Domestic procedural law: CPR Part 38 | 12–20 |
| Subject-matter jurisdiction under European law | 21–28 |
| The witnesses | 29–47 |
| The Claimants' witnesses | 29–36 |
| Consumer witnesses | 36 |
| The Defendant's witnesses | 37–47 |
| Trade witnesses | 47 |
| Factual background | 48–88 |
| The Claimants | 48–59 |
| The Claimants' trade mark registrations | 60 |
| The Defendant | 61–73 |
| The Defendant's trade mark registrations | 74 |
| The parties' knowledge of, and contacts with, each other | 75–88 |
| Key legislative provisions | 89–92 |
| Relevant dates for assessment | 93–105 |
| The law | 93–98 |
| Assessment | 98–105 |
| The average consumer | 106–107 |
| The law | 106 |
| Assessment | 107 |
| Invalidity of the EU Trade Marks on relative grounds | 108–110 |
| Revocation of the Trade Marks for non-use | 111–184 |
| The law | 111–123 |
| The law with respect to genuine use | 114–115 |
| The law with respect to genuine use in the Union | 118 |
| Use of the trade mark in a form differing in in elements which do not alter its distinctive character | 119–123 |
| Assessment: UK864, UK398 and EU651 (Classes 25, 35) | 124–173 |
| The global e-shop | 125–146 |
| The AliExpress store | 147–157 |
| Social media | 158 |
| Offline uses | 159–162 |
| Overall assessment | 163–173 |
| Assessment: UK444 and EU044 (Class 14) | 174–178 |
| Assessment: UK444, UK757 and EU335 (Class 18) | 179–182 |
| Assessment: EU150 (Class 9) | 183–184 |
| Invalidity of UK297 on the grounds of bad faith | 185–197 |
| The law | 186–188 |
| Assessment | 189–197 |
| Invalidity of UK297 on relative grounds | 198–201 |
| Infringement | 202–216 |
| The law as to honest concurrent use | 205–208 |
| Assessment | 209–216 |
| The Defendant's counterclaim for passing off | 217 |
| Summary of principal conclusions | 218 |
Introduction
This case concerns a conflict over the use of the trade mark GIORDANO for clothing. Although GIORDANO is an Italian family name, neither side is Italian. The Claimants' business is based in Hong Kong, and their core markets are in Asia, Australasia and the Middle East. The Defendant's business is based in the Netherlands, and its markets are in Europe. Both businesses are well-established and have used the GIORDANO trade mark since the 1980s. The Claimants own a considerable number of UK and EU registered trade marks consisting of or comprising the word GIORDANO, including those listed in paragraphs 2 and 3 below (“the Trade Marks”). The Claimants allege that the Defendant has infringed the Trade Marks. (A claim for passing off was abandoned at the beginning of the trial.) The Defendant denies infringement and counterclaims for revocation and/or a declaration of invalidity of the Trade Marks and for passing off. In a nutshell, the Defendant's position is that the Claimants have not made genuine use of the Trade Marks and thus it is the Defendant which is the senior user of the trade mark GIORDANO in Europe. This case is one of around 60 trade mark disputes that have been or are being fought by the parties all round Europe (some of which I will refer to below). The situation cries out for a commercial settlement, but in the absence of a settlement the courts and tribunals must decide each case. This one raises a considerable number of issues, although the number was reduced during the course of the trial.
The Trade Marks
The First Claimant (“Walton”), a company incorporated in the Cayman Islands, is the registered proprietor of the following UK Trade Marks:
i) UK Trade Mark No. 2,000,864 consisting of the word GIORDANO for “articles of clothing, footwear and headgear” in Class 25 registered on 8 December 1995 with a filing date of 31 October 1994 (“UK864”).
ii) UK Trade Mark No. 2,010,444 consisting of the word GIORDANO for goods in Classes 14 and 18 including “wallets” and “belts made of leather and imitation leather” registered on 22 December 1995 with a filing date of 8 February 1995 (“UK444”). Giordano
iii) UK Trade Mark No. 2,140,398 consisting of the device
for “clothing, footwear and headgear” in Class 25 registered on 23 January 1998 with a filing date of 24 July 1997 (“UK398”).
iv) UK Trade Mark No. 2,141,757 consisting of the device
for goods including “bags, handbags, leather cases, travelling bags, shoulder belts; briefcases, file cases, attaché cases, purses, key bags …; umbrellas, parasols …” in Class 18 registered on 4 September 1998 with a filing date of 12 August 1997 (“UK757”).
v) UK Trade Mark No. 3,007,297 consisting of the stylised word
for goods and services in Classes 18, 25 and 35 including “clothing, footwear and headgear” and “retailing … services relating to … clothing, footwear, headgear” registered on 12 December 2014 with a filing date of 4 September 2014 (“UK297”).
Walton is the registered proprietor of the following EU Trade Marks:
i) EU Trade Mark No. 966,150 consisting of the device
for goods in Class 9 including “eyewear” registered on 16 April 2007 with a filing date of 14 October 1998 (“EU150”).
ii) EU Trade Mark No. 4,099,651 consisting of the word GIORDANO for services in Class 35 including “retailing … services in respect of … clothing, footwear, headgear” registered on 8 February 2006 with a filing date of 14 September 2000 (“EU651”).
iii) EU Trade Mark No. 1,856,335 consisting of the word GIORDANO for goods in Class 18 registered on 10 July 2010 with a filing date of 14 September 2000 (“EU335”).
iv) EU Trade Mark No. 2,239,044 consisting of the device
for goods in Class 14 registered on 8 August 2002 with a filing date of 31 May 2001 (“EU044”).
The sign complained of
The Claimants complain of the use of the word GIORDANO by the Defendant. The Defendant has used this sign both in plain type and in the form of various logos over the years, but neither side suggests that the different forms of use make any difference to the issues.
The Claimants' notice of partial discontinuance and the Defendant's application to set it aside
On 12 October 2015 and 9 February 2016 respectively Abanicos Ltd, a company owned by Arnold Verweij, the founder of the Defendant, applied to the European Intellectual Property Office (“EUIPO”) to revoke EU335 and EU651 on the ground of non-use. The Claimants commenced these proceedings on 25 August 2016 alleging infringement of all the Trade Marks. On 21 October 2016 the Defendant served a Defence and Counterclaim seeking revocation and/or declarations of invalidity of all the Trade Marks. Following discussions between the parties, on 11 May 2017 the parties sent a joint letter to the Court (“the Joint Letter”) contending that there were “special grounds” for continuing with the claim and counterclaim pursuant to what is now Article 132(1) of European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 on the European Union trade mark (codification) (“the Regulation”) for the following reasons:
“1. First, assuming that the validity of these marks remains before the High Court, the parties have agreed to request a suspension of the proceedings before EU IPO. This avoids the prospect of parallel proceedings.
2. Second, this action before the High Court includes grounds of invalidity in relation to EU TMs 1 856 335 and 4 099 651 additional to those before the EU IPO. In addition to revocation for non-use (which is before the EU IPO), the Defendant has also put validity in issue in the High Court proceedings on the basis of earlier rights owned by the Defendant and an allegation of bad faith. According, the proceedings before the EU IPO would not, even if determined, resolve the dispute between the parties in relation to the validity of these marks.
3. Third, for similar reasons, the proceedings before the EU IPO will not resolve the overall dispute between the parties: conversely; the present English proceedings will consider both the validity of the Claimants' rights and the lawfulness of the Defendant's trade in the UK. It will therefore be necessary for the High Court proceedings to continue regardless of the outcome of the proceedings before the EU IPO.
4. Fourth, the current proceedings before the High Court raise substantially the same issues of genuine use in relation to other UK and EU marks of the First Claimant. The disclosure and evidence in relation to these marks will also apply equally to the EU TMs 1 856 355 and 4 099 651. It would therefore be far more efficient, and in accordance with the overriding objective, to determine all of those issues together.
5. Fifth, given the nature of the matters in dispute (in particular, concerning historical use of the EU TMs and bad faith) it is necessary and appropriate that disclosure be given in order for the factual issues in dispute to be fairly determined. Similarly, it will be necessary to test both parties' evidence in cross-examination. Conversely, there is no procedure for disclosure or oral evidence before the EU IPO.
6. Finally, based on the Court Diary, the High Court proceedings are likely to come on for trial between February and May 2018. Early and comprehensive resolution of the dispute...
To continue reading
Request your trial
-
Easygroup Ltd v Easy Live (Services) Ltd
...assessment of whether there has been genuine use of a trade mark were set out in Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch); [2018] E.T.M.R. 34, per Arnold J at §§114–118 (and in what follows I remove some of his extensive citations in order to assist presen......
-
Lidl Great Britain Ltd v Tesco Stores Ltd
...jurisprudence. So far as point 6 is concerned, the following statement of principle in Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch); [2018] R.P.C. 19 at [186(i)] is of particular relevance to the present case: “A person is presumed to have acted in good faith unless ......
-
Gnat and Company Ltd (a company incorporated under the laws of the British Virgin Islands) v West Lake East Ltd
...support for them given at [94]. 81 The defendants relied on the judgment of Arnold J in Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch). The claim included an allegation of trade mark infringement and there was a counterclaim for revocation and/or a declaration of inval......
-
Easygroup Ltd v Nuclei Ltd
...amount to bad faith, beyond noting that a similar argument was rejected by Arnold J in Walton International v Verweij Fashion [2018] EWHC 1608 (Ch), [2018] ETMR 34, §197. UK528A and EU509 240 Again, for completeness, I will address the position as regards the UK528A and EU509 marks if, con......