The claimant sought to restrain the defendant from use of certain names when trading in the UK. The defendants challenged the jurisdiction of the court. The judge rejected the UK claimant’s submission, that by applying to strike out the claims on substantive grounds, Prudential (USA) had submitted to the jurisdiction. The strike out application was on three grounds: (i) that there was no arguable case for any legally binding contract between the parties; (ii) that the English court either had no, or should decline, jurisdiction to judge infringement of the mark ‘PRUMERICA’, and (iii) that for the mark ‘PRUDENTIAL-BACHE’, there had been no breach of the contract between the parties.
Held: The court although ‘not without considerable misgivings’ – that the claim in contract ‘was sufficiently arguable to justify service out of the jurisdiction’, but would not decide the contract issue summarily. It would be unwise to embark on a ‘mini-trial’. Prudential (USA) accepted that unauthorised use of the mark ‘PRUDENTIAL-BACHE’ might infringe the claimant’s rights as registered marks’ proprietor, but argued that its use the ‘PRUDENTIAL-BACHE’ mark in investment management services in material on a web site ‘www.prudential-bache.com’ was by the claimant’s consent. The court held that the varied nature of the defendant’s business was such that separating out activities to which consent was given or not, was imprecise and could not be decided then. ‘the precise scope of the mutual permissions given by each to the other is difficult to discern as is the question whether the activities advertised in the P-US web site fall within any relevant permission from P-UK’. That was not an issue which could be resolved in summary proceedings.
Judges:
Justice Laddie
Citations:
[2002] EWHC 534 (Ch), [2002] IPandT 781
Jurisdiction:
England and Wales
Cited by:
Appeal from – Prudential Assurance Co Ltd v Prudential Insurance Co of America CA 12-Mar-2003
The need to avoid conflict between trade marks registered in more than one country within the community was not dealt with by the Directive, but regard had to taken of the Convention. The Cour d’Appel had issued a final judgment in proceedings for . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 06 May 2022; Ref: scu.186457
