Application of articles 29 and 30 of Regulation (EU) No 1215/2012 (the Judgments Regulation) to proceedings for trade mark infringement and passing off issued in England by the respondent against the appellants, a month after the appellants had commenced proceedings in Cyprus against the respondent.
The defendants had brought proceedings in Cyprus seeking declarations to the effect that they could use disputed trade marks under the terms of what they claimed to be a settlement agreement between the parties; the claimant in this jurisdiction was seeking relief in respect of alleged infringements and passing off.
Held: There was identity of ’cause’ and ‘objet’, notwithstanding that the respective claims were in contract and in tort. The absence of the claimant’s consent was part of its cause of action (as understood in the domestic law sense) in the English proceedings, and ‘the very matter being asserted by the defendants in the Cypriot proceedings is that the claimant consented to the use of the marks.’. Accordingly:
‘If the claims in the English and Cypriot proceedings are examined, without regard to any possible defences, it is apparent that the claimant’s consent to the defendants’ use of the marks, or lack of such consent, is an essential element of both claims. While the Cypriot proceedings are more extensive in the relief sought that the English proceedings, so that there is not a complete overlap between the proceedings, the essential question is whether the ’cause’ in the English proceedings is mirrored in the Cypriot proceedings. It is, in my judgment, as regards the issue of consent.’
Judges:
Lord Justice David Richards
Citations:
[2019] EWCA Civ 477, [2019] WLR(D) 177, [2019] 1 WLR 4630
Links:
Jurisdiction:
England and Wales
Cited by:
Cited – Wright v Granath QBD 16-Jan-2020
Defamation across borders – Jurisdiction
The claimant began an action for defamation in an online publication. The Norwegian resident defendant had begun an action there seeking a declaration negating liability. The Court was now asked by the defendant whether under Lugano, the UK action . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 15 October 2022; Ref: scu.634792