The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America

Article 105 of the Community Trade Mark Regulation (Council Regulation 40/94/EEC) coordinates concurrent and successive infringement actions based on Community and national trade marks. Article 105(2) and (3) operate only where the marks on which the two courts are seized are identical and valid for identical goods or services. An opposition to registration is not an infringement action merely because confusing similarity arises in both proceedings. A prior registration decision therefore did not bar English infringement proceedings where the earlier court dealt with a national mark and the English court was seized on the basis of different Community trade marks. The Brussels Convention’s lis pendens provisions address concurrent pending actions. Recognition of an earlier judgment cannot displace the exclusive jurisdiction of the court concerned with the validity of its own national mark. No preliminary reference was warranted at that stage.

The claimant brought trade mark proceedings seeking to restrain the defendant’s use of PRUMERICA and PRUDENTIAL-BACHE in the United Kingdom and Europe. The claims relied on a 1974 agreement and alleged infringement of Community and United Kingdom trade marks.

The defendant applied to set aside service out of the jurisdiction and to strike out or stay the claims. Mr Justice Laddie allowed the contractual and PRUDENTIAL-BACHE issues to proceed, but rejected the jurisdictional challenge concerning PRUMERICA: [2002] EWHC 534 (Ch). The appeal concerned whether a French decision in opposition proceedings relating to registration of PRUMERICA required the English court to reject or stay the infringement claims under Article 105 of the Community Trade Mark Regulation (Council Regulation 40/94/EEC) or the Brussels Convention.

Lord Justice Chadwick delivered the judgment, with which Lord Justice Potter and Lord Justice Kennedy agreed.

1. Appeal dismissed. The order below was upheld. The appeal was dismissed with costs, subject to detailed assessment. An interim payment of £40,000 was ordered, the application for a reference to the European Court of Justice was refused, and permission to appeal was refused.
2. Article 105(2) of the Community Trade Mark Regulation (Council Regulation 40/94/EEC) did not apply. Paragraphs 2 and 3 address successive proceedings and complement paragraph 1. The reference to an identical trade mark valid for identical goods or services qualifies the final judgment relied on, rather than narrowing the expression same cause of action. The French court was seized on the basis of the national mark PRUMERICA, whereas the English court was seized under the Community trade marks PRU and PRUDENTIAL. The necessary dual identity was therefore absent.
3. The court agreed that Article 105(1) concerns concurrent actions for infringement. Opposition proceedings before a trade mark registry are not transformed into infringement proceedings because the issue of confusing similarity may arise in both. The nature of the proceedings is unchanged by an appeal to a national court. It was left open whether Article 105(2) or (3) could apply where the earlier final judgment arose from revocation or invalidity proceedings concerning an identical national trade mark.
4. The lis pendens provisions of the Brussels Convention, Articles 21 to 23, concern concurrent pending proceedings. Where one party already has a judgment, the relevant provisions are those governing recognition, particularly Article 26. Article 26 could not assist the defendant where the English proceedings involved the validity of United Kingdom trade marks, because Articles 16(4), 19 and 28 preserved the exclusive jurisdiction of the State of registration. Whether recognition could have a different effect where validity was not in issue was not decided. Article 105 could not indirectly determine the United Kingdom trade mark claims.
5. A preliminary reference under Article 234 of the EC Treaty was unnecessary and premature. The contractual issue would proceed to trial and might make the trade mark issue moot. Article 105 did not govern the national mark claims, and there was no real doubt requiring a reference on Article 26 before the exclusive-jurisdiction issue had been established.

1. Court of Appeal (Civil Division): Appeal from the order of Mr Justice Laddie dismissed. The application for a reference to the European Court of Justice and permission to appeal were refused.
2. High Court of Justice (Chancery Division): Mr Justice Laddie rejected the jurisdictional challenge to the PRUMERICA infringement claim and allowed the contractual and PRUDENTIAL-BACHE issues to proceed: [2002] EWHC 534 (Ch).