The Black & Decker Corporation v Dvize BV

For jurisdiction under article 125(5) of the EUTM Regulation, the claimant must show a good arguable case that the defendant committed, or threatened, an infringing act in the Member State of the court seised. It is insufficient that the damage occurred, or would occur, there. The relevant conduct is active conduct giving rise to the alleged infringement.

A good arguable case requires a plausible evidential basis for the jurisdictional gateway. The court must take a view where the material permits a reliable assessment. A contested but plausible basis may suffice where the interlocutory material does not permit one. Consent is a merits defence, and the defendant bears the burden of proving it.

Black & Decker Corporation brought proceedings against Dvize BV concerning the threatened use in the United Kingdom of EU trade marks. The parties had previously operated under a licence which expired on 31 December 2016. Dvize contended that a replacement agreement had been concluded, or that Black & Decker was estopped from denying it. Black & Decker relied on a later consent which it had withdrawn.

Dvize challenged the jurisdiction of the English court. Black & Decker relied on article 125(5) of the EUTM Regulation, while also seeking an interim injunction. The central questions were whether Dvize had threatened an infringing act in the United Kingdom and whether Black & Decker had a good arguable case on consent.

1. Jurisdiction. The court had jurisdiction under article 125(5) of the EUTM Regulation. That provision is a lex specialis. It confers jurisdiction where the alleged infringing conduct was committed or threatened, not merely where the infringement produced its effects. Article 126(2) limited the jurisdiction to acts committed or threatened in the United Kingdom.
2. Standard of proof. The applicable interlocutory standard was a good arguable case. The claimant had to provide a plausible evidential basis for the jurisdictional gateway. Where the evidence permitted a reliable assessment, the court had to take a view. Where it did not, a plausible although contested evidential basis could suffice.
3. Threat of use. Dvize asserted an entitlement under the replacement agreement, offered only a conditional undertaking not to use the marks, and recognised that an English injunction could cause substantial damage to its business. Those matters provided at least a plausible basis for finding a threat to use the marks in the United Kingdom. It was unnecessary to determine where property in previously supplied goods had passed.
4. Consent. Black & Decker also had a good arguable case that Dvize could not establish consent. Consent was a defence on the merits, so the burden lay on Dvize. Relevant matters included the parties’ prior practice of signing agreements, the statement that the agreement needed to be agreed and signed, the counterpart-execution clause, Dvize’s expectation that Black & Decker would countersign, and correspondence suggesting that matters remained to be finalised.
5. Accessory liability. As the EUTM Regulation did not harmonise accessory liability, English law applied through article 129(2). Joint tortfeasor liability depended on whether Dvize had acted to further the infringement pursuant to a common design with the distributor. That was acutely fact-sensitive. The evidence gave Black & Decker a plausible basis for advancing such a case.
6. Interim injunction. Dvize’s undertaking made it unnecessary to decide the injunction application. If jurisdiction had been absent, however, the court would have granted an injunction under article 131. Provisional measures preserve a factual or legal situation to safeguard the rights in issue. The balance of risk favoured Black & Decker because competing licensees would create confusion and damage to the marks, while Dvize’s losses could be assessed under the cross-undertaking.