Jules Rimet Cup Ltd v The Football Association Ltd

Where related intellectual-property issues can be determined either by the High Court or the Trade Mark Registry, the appropriate forum depends on the overriding objective, fairness and the need to achieve justice.

The court should consider the nature and complexity of the dispute, the evidence and procedures required, the expertise and function of each tribunal, timing, costs and the relationship between the issues. A dispute requiring a full copyright and passing-off trial, including disclosure and substantial witness evidence, may be more appropriately determined in the High Court even where the Registry has jurisdiction.

Security for costs and tactical advantage should not dictate the order in which substantive issues are resolved.

The claimant had applied to register marks relating to World Cup Willy. The defendant opposed the applications in the Trade Mark Registry and raised copyright and passing-off objections. The claimant commenced High Court proceedings seeking declarations and damages for alleged interference with its business and inducement of breach of contract.

Both parties subsequently sought stays in the competing proceedings. The central issue was whether the intellectual-property disputes should be determined in the High Court or in the Trade Mark Registry, and how the outstanding security for costs application should affect that choice.

1. The High Court proceedings were not stayed. The Trade Mark Registry proceedings were to be stayed, subject to further directions.

2. The copyright and passing-off issues had to be determined somewhere. Although the Trade Mark Registry was a possible forum, the real dispute was a substantial copyright and passing-off dispute rather than an ordinary trade mark opposition. Its proper determination was likely to require disclosure, witness evidence and cross-examination. Those procedures were natural to the Chancery Division and less usual in the Registry. The High Court was therefore the more appropriate forum.

3. The High Court was also the only forum capable of determining the claimant’s common-law wrongful-interference claims. The intellectual-property issues could be determined first, with the common-law claims potentially stayed until their outcome was known.

4. The choice of forum was governed by the overriding objective, fairness to the parties and the need to achieve justice. The cost advantage asserted for Registry proceedings was not established and, in any event, cheaper proceedings might reflect a less satisfactory resolution. The availability of effective adverse costs orders favoured the High Court rather than the Registry. Timing was neutral because any difference in trial dates was insignificant.

5. The security for costs application did not determine the proper forum. The issues should first be identified and ordered for efficient determination, with the consequences for security considered thereafter. The court warned that if tactical steps made the High Court proceedings unavailable, the Registry proceedings might need to be revived.