Case No. IP-2015-000146

1.Since the time of the Roman empire marble has been extracted from quarries near the city now called Prilep, in the Balkan peninsula. The marble was and is famed for its white colour and homogenous appearance which have made it a marble suitable for statuary, for use in the Emperor Diocletian’s palace and more recently in the Grand Mosque in Abu Dhabi and in upmarket bathrooms.2.Prilep and its nearby quarries are now in the Republic of Macedonia, formerly part of Yugoslavia. Due to a dispute with Greece over its name, that state is has become a member of organisations such as the United Nations and the Council of Europe using a longer title: ‘The Former Yugoslav Republic of Macedonia’. Solely for brevity and meaning no offence to Greece, I will call it Macedonia.3.The claimant (“Mermeren”) is a Macedonian company which has been extracting marble from near Prilep since 1950. A decision of the People’s Republic of Macedonia dated 1950 records the transfer to Mermeren of “the plants for the extraction of marble in s. Chaska, Debreshite, Skrka and Sivec within Prilep region” (in translation from the Macedonian). Of the places mentioned Chaska and Debreshite are villages, and Skrka is a mountain, all of them near Prilep.4.That leaves Sivec, pronounced Sivets locally. I was shown maps dating from the 1970s in which Sivec is identified as a mountain pass in the same region. Sivec is also named as a location in a geological map dated 1969 showing, among other things, areas of marble deposits north of Prilep.5.Mermeren is the proprietor of EU Trade Mark No. 012057915 (“the Trade Mark”), which takes the form of the word SIVEC, registered in respect of ‘Marble of all types’ among other related goods. It was granted as of 9 August 2013.6.The defendant (“Fox”) is a UK company incorporated in October 2011 which extracts and sells marble. One of its quarries is in the Prilep region in Macedonia. It sells that marble under the sign ‘Sivec’.7.Mermeren has brought the present proceedings against Fox for infringement of the Trade Mark. Fox has admitted using a sign identical to the Trade Mark for goods identical to those in respect of which the Trade Mark is registered. A defence to infringement was pleaded pursuant to art.12 of Council Regulation (EC) No. 207/2009 (“the Regulation”), namely that the Trade Mark indicated the geographical origin of the marble in respect of which the mark was used by Fox. Fox’s main defence and principal contention, however, was that the Trade Mark was invalidly registered and/or should be revoked. Fox counterclaimed accordingly.8.Emma Himsworth QC and David Wilkinson appeared for Mermeren, Michael Hicks for Fox.