| TRADE MARK — European Community trade mark — Practice — Claimant bringing infringement proceedings in High Court — Defendant counterclaiming for revocation — Invalidity proceedings subsequently brought in OHIM — Whether presumption that English proceedings to be stayed — Council Regulation (EC) No 40/94, art 100(2)
Kitfix Swallow Group Ltd v Great Gizmos Ltd [2007] EWHC 2668 (Ch)
Ch D: Mann J: 22 November 2007
Where English trade mark proceedings in which there was a counterclaim for revocation were running concurrently with proceedings commenced in the Office for the Harmonisation in the Internal Market there was no presumption that the English proceedings would be stayed.
Mann J so held in the Chancery Division when dismissing an application by Great Gizmos Ltd, the defendant in trade mark proceedings brought by Kitfix Swallow Group Ltd, for a stay of those proceedings in favour of proceedings before the Office for the Harmonisation in the Internal Market (“OHIM”).
The claimant was an English company and was the registered proprietor of a Community registered trade mark for the word mark “Sequin Art” registered for craft and hobby kits for making pictures. The defendant was the English distributor of craft kits for making pictures out of different coloured sequins and bearing the name “Sequin Art”. Kitfix issued a claim form seeking relief for trade mark infringement and passing off. The defendant denied infringement and passing off and counterclaimed for a declaration that the mark was invalid. The manufacturer subsequently commenced proceedings at OHIM for a declaration that the mark be declared invalid whereupon the defendant sought a stay of the English proceedings. OHIM initially stayed those proceedings but them resumed them.
MANN J said that while there was a certain amount of jurisprudence in the cases about the interaction between English patent proceedings and proceedings in the European Patent Office (see Glaxo Group Ltd v Genentech Inc [2007] EWHC 1416 (Pat), and the cases there referred to) there was none about the particular institutional interaction that arose in the instant case. The patent law analogy however was not useful. It was true that the operation of patents law and trade mark law had in common the existence of European institutions operating to some extent in parallel with national courts. That meant that the potential for concurrent actions, and the need to consider staying proceedings, was common to both. However, it did not follow that the answer for one was the same as the answer for the other. In trade mark cases art 100 of the Community Trade Mark Regulation (Council Regulation 40/94) to some extent dealt with the question of concurrent proceedings in a national court and OHIM. Para 2 provided that where the Office was hearing an application for revocation or for a declaration of invalidity, unless there was special grounds for continuing the hearing, it would stay the proceedings where the validity of a Community trade mark was already in issue on account of a counterclaim before a Community trade mark court. Para 2 went on to provide that if one of the parties to the proceedings before the community trade mark court so requested, the court could stay those proceedings, in which case the Office would continue the proceedings before it. Art 100(2) did not deal with the factors to be applied where OHIM decided there were special grounds for continuing its hearing within the first part of the paragraph, or if an application was made to the national court under the second part. However, it was plain that there was no presumption in favour of a stay of the English proceedings in favour of OHIM in either of those situations. What the court had to do in those situations was to arrive at a decision that was just, bearing in mind all the relevant factors, including the legitimate interest that the claimant would usually have in being able to pursue its proceedings in its chosen jurisdiction.
|
