Guccio Gucci SpA v Shipton & Heneage Ltd

Under Article 104 of the Community Trade Mark Regulation, proceedings concerning Community trade marks should ordinarily be stayed where validity proceedings are pending before OHIM. A refusal to stay requires special grounds, meaning factual circumstances specific to the individual case and outside the ordinary run of cases. Concurrent national trade-mark or passing-off claims, delay inherent in OHIM procedures, and the general business interest in certainty do not, without more, constitute special grounds.

National claims fall instead within the court’s wide discretion under section 49(3) of the Senior Courts Act 1981. Although avoiding duplication is relevant, substantial delay may outweigh the desirability of trying all claims together.

Guccio Gucci SpA brought claims for infringement of Community and national trade marks and for passing off against Shipton & Heneage Ltd. The defendant had applied to OHIM for cancellation or revocation of the Community trade marks and sought a stay of the High Court proceedings pending OHIM’s decision.

The application concerned the interaction between the Community Trade Mark Regulation and the court’s domestic discretion. The central issues were whether special grounds justified refusing a stay of the Community trade-mark claims and whether the national trade-mark and passing-off claims should also be stayed.

1. Community trade-mark claims. The claims based on the Community trade marks were stayed under Article 104(1) of the Community Trade Mark Regulation. The statutory presumption in favour of a stay was strong because the Regulation sought to avoid inconsistent decisions and duplication. The discretion to continue proceedings arose only where special grounds existed.
2. Meaning of special grounds. Applying the approach in Nokia Corporation v Wardell (case C316/05), special grounds required factual circumstances peculiar to the individual case. The derogation from the mandatory rule was to be construed narrowly. The mere existence of concurrent national trade-mark claims, or a passing-off claim arising from substantially the same facts, was insufficient. The first-in-time principle and the Regulation’s policy of concentrating the dispute in one forum supported the stay.
3. The allegation that the OHIM application was abusive did not justify refusing the stay. The application was not obviously abusive, and under the approach illustrated by Turner v Grovit an allegation of abuse carried limited weight where the applicable procedural scheme required deference to the other forum. Any genuine abuse could be addressed by OHIM.
4. National claims. The national trade-mark and passing-off claims were governed by the wide discretion under section 49(3) of the Senior Courts Act 1981. The policy favouring a single determination was less powerful because OHIM could not determine those claims. Following the emphasis on delay in Glaxo Group Limited v Genetech Inc., the likely delay outweighed the desirability of a joint trial. The action therefore proceeded to trial on the national trade-mark and passing-off claims. Protective measures could be imposed during the stay if required.

First-instance decision on the defendant’s application for a stay.