IP-2020-000138 - [2023] EWHC 1455 (IPEC)

Art.132(1) falls within Chapter X of the Trade Mark Regulation. It provides:

“1.

An EU trade mark court hearing an action referred to in Article 124 other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.”

Art.123 of the Trade Mark Regulation requires Member States to designate national courts which have the functions of EU trade mark courts under the Regulation. Art.124, referred to in art.132(1), provides:

“The EU trade mark courts shall have exclusive jurisdiction:

(a)

for all infringement actions and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks;

(b)

for actions for declaration of non-infringement, if they are permitted under national law;

(c)

for all actions brought as a result of acts referred to in Article 11(2);

(d)

for counterclaims for revocation or for a declaration of invalidity of the EU trade mark pursuant to Article 128.”

The UK Community Trade Mark Courts Regulations 2006 (SI 2006/1027) (“the 2006 Regulations”) as amended designate the High Court and the County Courts at the seven regional Business and Property Court centres as EU trade mark courts in accordance with art.123.

I pause here to mention the reason given in the Karet Judgment for refusing a stay of the threats action. It was held that a UK threats action is not listed in art.124 of the Trade Mark Regulation and consequently art.132(1) could not be engaged and there could be no stay. It followed that there was no need to consider the issues on post-Brexit transitional provisions which have been raised in the present hearing.