Seraphine Limited v Mamarella GmbH

A case-management stay should be granted only where it best advances the overriding objective, having regard to the particular procedural circumstances and the need for proportionate, efficient resolution. Parallel foreign proceedings do not automatically justify delaying an English claim, especially where the applicant is ready to plead its case and the foreign court’s eventual effect on the English proceedings remains uncertain.

The court may address duplication and expense at a case-management conference after the pleadings are closed. Relevant considerations may include the complexity of the issues, the disclosure and evidence required, the parties’ commercial interests, and the likelihood that overlapping issues will be determined abroad.

Seraphine brought intellectual property proceedings against Mamarella concerning alleged infringement of unregistered Community design rights. Four garments, described as the Overlap Garments, were also the subject of proceedings in Munich. Four further garments were not in issue in Germany.

Mamarella applied for a stay of the English proceedings pending the Munich court’s decision. The German proceedings had been reformulated and an oral hearing was listed for November 2024, but it remained uncertain whether a merits judgment would be delivered and what effect it would have in England. Seraphine opposed a stay and proposed that Mamarella serve its Defence, with any overlapping issues managed later.

1. Application dismissed. Mamarella’s application for a stay, whether generally or in relation only to the Overlap Garments, was refused. Mamarella was directed to serve its Defence by 3 July 2024, with Seraphine’s Reply due by 31 July 2024.
2. The appropriate question was whether a stay would provide the best way to manage the proceedings having regard to the overriding objective. The existence of parallel proceedings in Germany did not itself justify a stay. The possible effect of a Munich judgment, including any question of res judicata, could not properly be determined on the limited materials before the court and without argument and evidence from German lawyers.
3. Mamarella was able to plead its case. Preparations for its Defence were well advanced, and its position was that the issues concerning the Overlap Garments were the same as those in Munich. It therefore had to serve a Defence addressing the whole claim. If it wished to contend that a Munich judgment would create a res judicata, that contention should be pleaded.
4. After the pleadings were closed, a case-management conference could address the effect of the Munich proceedings and the proportionality of preparing the English claim. The court might limit the design rights and alleged infringements considered at trial. Relevant factors could include the complexity of subsistence and infringement issues, the disclosure and evidence required, the commercial importance of the designs and garments, and whether the corresponding issues were likely to be determined by the Munich court.
5. Splitting the Defence between the non-Overlap Garments and the Overlap Garments was not appropriate. The concerns about duplicated expenditure could be addressed through subsequent case management.

The judgment followed an earlier procedural judgment dated 1 March 2024, reported as [2024] EWHC 425 (IPEC). In that judgment the court refused to set aside service or decline jurisdiction, refused permission for a proposed amendment, and adjourned Mamarella’s stay applications with liberty to restore them. The present judgment determined the restored case-management stay application.