Easy Rent A Car Ltd & Anor v Easygroup Ltd

For the mandatory lis pendens rule in article 29 of Regulation (EU) No 1215/2012, the phrase “same cause of action” has an autonomous European meaning. The court compares the claims as formulated, not domestic labels, defences or counterclaims. It asks whether the proceedings share their basic facts, claimed rights and obligations, juridical basis and end in view.

Proceedings may have the same cause even though one action places only one essential element in dispute while the other potentially raises further elements. A first-seised court remains seised while an appeal is pending against an order which set its proceedings aside. If article 29 applies, the second-seised court must stay and, once the first court’s jurisdiction is established, decline jurisdiction.

The respondent brought English proceedings for infringement of UK trade marks and passing off. One month earlier, the appellants had begun proceedings in Cyprus seeking declarations, injunctions, specific performance and damages based on an alleged settlement agreement permitting their use of the disputed signs.

HH Judge Hacon refused a mandatory stay under article 29 and a discretionary stay under article 30 of Regulation (EU) No 1215/2012. After that decision, the Cypriot claim was set aside for procedural and substantive reasons, but the appellants appealed in Cyprus. The Court of Appeal admitted evidence of those later events.

The central questions were whether the Cypriot court remained seised pending that appeal and whether the English and Cypriot claims involved the same cause of action. The court also considered, in the alternative, whether article 30 would justify a discretionary stay.

1. Appeal allowed. The Cypriot court remained seised while the appeal against the order setting aside its proceedings was pending. “Seised” has an autonomous European meaning. Treating the first-seised proceedings as continuing until jurisdiction is finally determined serves the Regulation’s purpose of preventing irreconcilable judgments. National procedural differences and the likely delay in the Cypriot appeal could not alter that meaning.

2. Article 29 applied because the two proceedings had the same cause and object. The inquiry concerns the basic facts, claimed rights and obligations, juridical basis and end in view. Domestic labels such as contract and tort do not determine the issue. Claims alone are considered; defences and counterclaims are disregarded.

3. Absence of the proprietor’s consent is an essential element of trade mark infringement under section 9 of the Trade Marks Act 1994. It remains an element even if the alleged infringer bears the burden of proving consent. Consent is likewise integral to passing off because there can be no actionable misrepresentation where the claimant authorised the conduct. Consent differs from acquiescence and estoppel.

4. The alleged settlement agreement was the vehicle by which the appellants asserted consent in Cyprus. Consent was therefore essential to both claims. The Cypriot proceedings placed only that element in dispute, while the English proceedings potentially raised further elements. That narrower dispute did not prevent identity of cause because matters not disputed in Cyprus were effectively assumed in the respondent’s favour. In any event, the Cypriot writ remained wide enough to encompass all elements of the English claim; counsel’s non-binding indications did not narrow the pleaded claim.

5. The English court therefore had no choice under article 29 but to decline jurisdiction in favour of the first-seised court.

6. Had article 30 arisen, a discretionary stay would have been refused. The degree of overlap is important but may be outweighed by other factors. Here, the three-to-four-year delay before the Cypriot appeal, the absence of any extant Cypriot proceedings unless that appeal succeeded, and the undeveloped state of those proceedings were overwhelming considerations against a stay.

1. Court of Appeal (Civil Division): Allowed the appeal. Article 29 of Regulation (EU) No 1215/2012 applied, requiring the English court to decline jurisdiction. The court stated that it would have refused a discretionary stay under article 30.
2. High Court of Justice, Business and Property Courts, Intellectual Property List: HH Judge Hacon, sitting as a Deputy High Court Judge, dismissed the appellants’ application to stay the English proceedings under articles 29 and 30. No neutral citation is stated in the judgment.