Crafts Group LLC v M/S Indeutsch International & Anor

An English court designated as an EU trade mark court before IP completion day retains jurisdiction over proceedings concerning EU trade marks instituted before that day, and over related proceedings within the meaning of arts 29–31 of Brussels I Recast. An action concerning threatened infringement is an action listed in art 124(a) of the Trade Mark Regulation. Accordingly, art 132(1) may require a stay where related cancellation proceedings are pending before the EUIPO. Separately, a stay may be granted on case-management grounds where the relevant considerations apply to all claims.

This supplemental judgment concerned an application by the defendants for further reasons after permission to appeal the Main Judgment had been refused. The claimant’s proceedings included claims concerning threatened infringement, infringement, revocation and invalidity of EU trade marks. The claimant argued that, because no proceedings under art 124 of the Trade Mark Regulation were pending at IP completion day, the court lacked continuing jurisdiction as an EU trade mark court and could not apply art 132(1).

The court also addressed complaints that the Main Judgment had failed to give reasons for its conclusions on jurisdiction and on a possible case-management stay.

1. Reasons and permission to appeal. Following the guidance in English v Emery Reimbold & Strick Ltd [2002] EWCA Civ 605, the judge expanded the reasons for the Main Judgment. Permission to appeal remained refused because the Trade Mark Regulation issues were subsumed within the case-management decision.
2. Jurisdiction before IP completion day. Article 123 of the Trade Mark Regulation required Member States to designate EU trade mark courts. Regulation 12 of the Community Trade Mark Regulations 2006 designated the High Court, including this specialist list, as such a court. Regulation 6(1) made actions for unjustified threats available in relation to Community trade marks, with the claims determined under section 21 of the Trade Marks Act 1994. The court therefore had jurisdiction when the threats claim was issued on 11 December 2020.
3. Continuing jurisdiction after departure. Article 67(1)(a) of the Withdrawal Agreement preserved the Trade Mark Regulation’s jurisdictional provisions for proceedings instituted before IP completion day and related proceedings within arts 29–31 of Brussels I Recast. The transitional provisions in paragraph 7 of Schedule 5 to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 were construed consistently with that provision. The court consequently retained jurisdiction over the threats action and related claims.
4. Article 132(1). An action concerning threatened infringement is expressly included in art 124(a) of the Trade Mark Regulation. The court rejected the contrary view in the Karet Judgment and held that art 132(1) was engaged. Because cancellation proceedings concerning the EU Chevron Mark were pending before the EUIPO and no special grounds existed, the court was obliged to stay the relevant infringement, threats, revocation and invalidity claims.
5. Case management. The reasons given in the Main Judgment for a case-management stay applied to all claims, including those already subject to the mandatory statutory stay.

The judgment was supplemental to the Main Judgment handed down on 16 June 2023. Permission to appeal had been refused, and the claimant subsequently filed a notice of appeal in the Court of Appeal. This court provided additional reasons but maintained its refusal of permission.