Rousselon Freres Et Cie v Horwood Homewares Ltd

The court has an inherent jurisdiction to stay an order pending appeal. A declaration of trade mark invalidity may also be suspended pending separately brought invalidity or revocation applications where the declaration would produce effectively irreversible consequences against the registered proprietor and third parties.

The discretion is exercised by balancing prejudice, delay, the apparent bona fides of the applications, the likely duration of the proceedings and available interim protection. The court should not decide the merits of substantial applications on limited stay evidence.

Rousselon Freres Et Cie appealed from a decision of the Registrar of Trade Marks concerning the validity of Horwood Homewares Limited’s marks. In an earlier judgment, the court held that Horwood’s marks were invalid so far as concerned Class 8 and was required to determine the form and timing of the resulting declaratory relief.

Horwood sought suspension of the declaration pending its separate applications to invalidate or revoke Rousselon’s marks. The court considered whether it had jurisdiction to suspend the practical effect of the declaration and, if so, whether that discretion should be exercised.

1. Jurisdiction. The court has an inherent jurisdiction to grant a stay pending appeal. CPR 52.7 does not itself confer that jurisdiction; it merely provides that an appeal does not operate as an automatic stay.
2. The court does not possess an unrestricted power to suspend enforcement or execution of its judgments. Any suspension must remain within the limits identified in TC Trustees Ltd v JS Darwen (Successors) Ltd [1969] 2 QB 295. That decision did not prevent suspension here because the separate invalidity and revocation applications had not formed part of the proceedings before the Registrar.
3. The court may suspend a declaration of trade mark invalidity pending separately brought applications which may remove the basis for the declaration. A registered trade mark is a property right enforceable against the world, and entry of invalidity on the register is effectively irreversible. Without suspension, the proprietor could lose earlier property rights and filing-time advantages, and third parties could rely on the entry even if the declaration later ceased to have a substratum.
4. In exercising the discretion, the court must balance the parties’ prejudice. Relevant considerations included the delay in bringing the applications, whether they were bona fide and had a good arguable case, the possible duration of the proceedings, the practical prejudice caused by registration or non-registration, and the availability of interim protection. It was disproportionate to require the full evidence on the merits to be deployed on the stay application.
5. The court rejected the suggested prejudice arising from an inability to commence infringement proceedings because Horwood expressly undertook not to rely on Trade Marks Act 1994, section 11(1), as a defence. Rousselon could therefore issue proceedings and stop limitation running.
6. The declaration was suspended pending resolution of Horwood’s invalidity and revocation applications. The court made no determination on their merits.

• High Court (Chancery Division): On appeal from the Registrar of Trade Marks, the court had previously held Horwood’s Class 8 marks invalid. In this supplemental judgment it suspended the declaration pending Horwood’s separate invalidity and revocation applications.