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

Both KnitPro defendants are partnership firms formed under Indian law. They are part of a group headed by the Indian company Indeutsch Industries Private Limited. From August 2007 the Indeutsch group supplied to Crafts’ predecessor, Crafts Americana, wooden knitting needles and crochet hooks which bore a decorative chevron pattern in two styles.

In late 2009 Crafts applied for a trade mark in the form of one of the chevron patterns in the United States Patent and Trade Mark Office.

To protect its position outside the United States, in February 2010 KnitPro (specifically the first defendant, but I need not distinguish the defendants) filed two applications in the EUIPO for trade marks. Both were registered on 10 August 2010 in class 26 for knitting needles and crochet hooks. The first, “the EU Chevron Mark” takes a chevron form, as does the second (“the EU Symfonie Mark”), more figuratively. Following Brexit the second defendant obtained comparable UK trade marks, the “UK Chevron Mark” and the “UK Symfonie Mark”.

On 26 May 2010 the parties signed what was referred to as the “Trade Dress Rights Agreement”, by which they sought to delimit geographically their respective uses of two types of chevron signs used on their products.

The relationship broke down. Crafts began to sell knitting needles and crochet hooks in competition with those made by KnitPro. On 9 January 2013 Crafts applied to the EUIPO seeking cancellation of KnitPro’s EU Chevron Mark under art.7(1)(a) and (b) of the Trade Mark Regulation.

In 2015 KnitPro became aware that Crafts was selling knitting needles and crochet hooks through Amazon in the United Kingdom and in Germany, both types of product bearing a sign which KnitPro believed constituted an infringement of its EU Chevron Mark. In the UK they were branded Crafts’ “Caspian” products. In June 2015 KnitPro instigated a takedown request to Amazon. Amazon removed the listing of the Caspian products from Amazon.co.uk on 14 July 2015.

On 23 July 2015, trade mark attorneys acting for Crafts wrote to KnitPro’s solicitors alleging that KnitPro had made unjustified threats of infringement of the EU Chevron Mark by reason of its communications with Amazon. On 29 July 2015, KnitPro’s solicitors replied, denying the claim.

On 30 November 2015 Amazon removed another line of Crafts’ needles, the “Sunstruck” needles, following KnitPro’s complaint that they infringed the EU Chevron Mark.

Meanwhile Crafts took no further steps in respect of its allegation of threats and did not do so for over five years. The next that KnitPro heard about this allegation was when solicitors newly instructed by Crafts wrote to KnitPro’s solicitors on 12 November 2020 alleging that KnitPro’s communications with Amazon UK had constituted unjustified threats of infringement of the EU Chevron and Symfonie Marks contrary to s.21 of the Trade Marks Act 1994. A claim form was issued in this court by Crafts on 11 December 2020.

On 8 January 2021 the claim form was amended to add allegations of unjustified threats in relation to the UK Chevron and UK Symfonie Marks and later re-amended to correct the addresses of KnitPro.

I made an Order dated 20 May 2021 giving Crafts permission to serve the re-amended claim form in India. KnitPro were served on 3 August 2021. On 9 September 2021 KnitPro applied to set aside service. KnitPro also sought in the alternative a stay pursuant to art.132(1) of the Trade Mark Regulation.

In a judgment dated 23 December 2021, Ian Karet, sitting as an Enterprise Judge, refused either to set aside service or to grant the stay (“the Karet Judgment”). Permission was sought to appeal the order on service, which was refused by Snowden LJ on 29 September 2022.

On 27 October 2022 KnitPro served a Defence and Counterclaim. KnitPro allege that the EU Chevron and Symfonie Marks and the two comparable UK Marks have been infringed by Crafts. They further allege that Crafts has passed off its goods for those of KnitPro.

On 8 December 2022 Crafts served a Reply and Defence to Counterclaim, together with an Additional Claim. Crafts pleads that the Trade Dress Rights Agreement provides a defence to the allegation of infringement of all the Chevron and Symfonie Marks. In the Additional Claim Crafts alleges that the EU Chevron and UK Chevron marks were invalidly registered pursuant to, respectively, art.7(1)(a), (b) and (c) of the Trade Mark Regulation and s.3(1)(a), (b) and (c) of the Trade Marks Act 1994, and further that they stand to be revoked on grounds of non-use.

Part of Crafts’ case is that this Court does not have jurisdiction in relation to the EU Chevron and Symfonie Marks because it is no longer an EU trade mark court within the meaning of the Trade Mark Regulation. I discuss this below.

KnitPro’s principal argument for a stay is based on its contention that art.132(1) of the Trade Mark Regulation applies. KnitPro submits that this court is obliged to stay the proceedings insofar as they relate to the EU Chevron Mark.