Easygroup Ltd v Beauty Perfectionists Ltd

For proceedings concerning an EU trade mark that were pending at IP completion day, the court retains the jurisdiction previously available under Chapter X of EU Regulation 2017/1001, including jurisdiction to grant an appropriate pan-EU injunction. Paragraph 20 of Schedule 2A to the Trade Marks Act 1994 creates additional powers concerning comparable UK trade marks. It does not limit or derogate from the preserved jurisdiction. Explanatory material cannot alter the meaning of enacted legislation and must be disregarded where inconsistent with it. The Withdrawal Agreement and its domestic implementing legislation formed part of the statutory context when the relevant provisions came into force.

The claimant brought infringement proceedings concerning EU trade marks against companies and an individual connected with online sales of cosmetic products. The proceedings were issued before IP completion day, when the High Court could grant pan-EU relief.

The defendants applied to strike out claims for injunctions and other relief outside the United Kingdom. They argued that the Trade Marks Amendment etc (EU Exit) Regulations 2019 limited relief in pending proceedings to comparable UK trade marks. The central issue was whether the court retained its pre-IP-completion-day jurisdiction under the Withdrawal Agreement, EU Regulation 2017/1001 and Schedule 2A to the Trade Marks Act 1994.

1. Application dismissed. The court retained jurisdiction to grant a pan-EU injunction in the pending proceedings.
2. The 2019 Regulations came into force on IP completion day, by which time the Withdrawal Agreement and the EU Withdrawal Acts 2018 and 2020 were in force. Article 67 of the Withdrawal Agreement preserved the jurisdiction provisions in Chapter X of EU Regulation 2017/1001 for proceedings instituted before the end of the transition period. Section 7A of the European Union (Withdrawal) Act 2018 required the relevant rights and remedies to be recognised and enforced in domestic law.
3. The 2006 Regulations had not been impliedly repealed by the repeal of later amending instruments. In any event, paragraph 20 of Schedule 2A treated the court as an EU trade mark court for pending proceedings and preserved its relevant jurisdiction.
4. Paragraph 20(2) preserved the pre-IP-completion-day jurisdiction under Chapter X. Paragraphs 20(3) and 20(4) conferred additional powers concerning comparable trade marks (EU), including injunctions, revocation and invalidity orders. They did not restrict the existing power to grant pan-EU relief. The words “Subject to” did not impose an additional limitation.
5. DHL Express France SAS v Chronopost SA (C-235/09) confirmed that sanctions under Article 130 would normally include a prohibition extending throughout the EU. That supported the conclusion that the preserved jurisdiction included pan-EU injunctions where appropriate.
6. The exclusions of parts of Article 128 and Article 132 did not determine the issue. They concerned matters involving reciprocity with the EU IPO, and any inconsistency with Article 67 did not arise for decision.
7. The presumption against extra-territorial effect could not displace the clear construction of paragraph 20. The Explanatory Memorandum to the 2019 Regulations was an admissible contextual aid only to the extent that it assisted construction. Its suggestion that relief was limited to comparable UK trade marks was inconsistent with the enacted provisions and the later legislative context, and was disregarded.