Interflora Inc & Ors v Marks and Spencer Plc

The Court of Appeal confined the matters requiring retrial to infringement claims under section 10(1) of the Trade Marks Act 1994 and Article 9(1)(a) of the Community Trade Mark Regulation. Those issues were remitted to the Chancery Division for retrial before a different judge, with directions to be given by that judge. Any application for an injunction pending retrial was left to the High Court, without the Court of Appeal expressing a view on its merits. Other infringement claims determined in favour of the defendant were not reopened.

The appeal arose from proceedings in the Chancery Division Intellectual Property Community Trade Mark Court concerning infringement claims brought by Interflora Inc and Interflora British Unit against Marks and Spencer plc. The Court of Appeal dealt with the form of order following its appellate decision concerning the judgment of Arnold J, reported at [2013] EWHC 1291 (Ch).

The parties disputed the issues to be retried, the identity and role of the retrial judge, possible interim relief, costs, and repayment of money paid under the lower court’s order. The central issue was how the appellate decision should be implemented in the final order.

1. Scope of remittal. The Court made the order in the proposed form, subject to its modifications. The issues remitted for retrial were the infringement claims under section 10(1) of the Trade Marks Act 1994 and Article 9(1)(a) of the Community Trade Mark Regulation. Judgment had already been entered for Marks and Spencer on the other infringement claims under Arnold J’s orders dated 23 May and 12 June 2013. Those claims were not reopened because there was no cross-appeal or respondent’s notice in relation to them.
2. Retrial. The case was remitted for retrial before a different judge of the Chancery Division. The Court of Appeal declined to give directions on the form of the retrial beyond the matters identified in its judgment. Directions were to be given by the retrial judge on application.
3. Interim relief. The question whether an injunction should be granted pending retrial, and the terms of any injunction, was left to a Chancery Division judge on an application by Interflora. The Court expressed no view on the merits of that application. It likewise expressed no view on the merits of any application contemplated by the draft order.
4. Costs and payments. Pre-trial costs, trial costs, and the costs of implementing and operating the lower court’s order were reserved to the judge hearing the retrial. The Court rejected an issue-based approach to the appeal costs. Marks and Spencer was awarded its costs of appeals A3/2013/1737 and A3/2013/1737Y, including the permission application, while Interflora was awarded its costs of appeal A3/2013/1736. Those costs were to be assessed and set off in the usual way. Marks and Spencer was also awarded £160,000 on account of recoverable costs and repayment of £1,100,000, both payable within 21 days.

• Court of Appeal (Civil Division): On 12 November 2014, the court settled the form of order, remitting specified infringement claims for retrial before a different Chancery Division judge and making consequential costs and payment orders.
• High Court of Justice, Chancery Division, Intellectual Property Community Trade Mark Court: The appeal was from Arnold J’s judgment reported at [2013] EWHC 1291 (Ch). Judgment had been entered for Marks and Spencer on other infringement claims by orders dated 23 May and 12 June 2013.