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

Crafts argued that art.132(1) is not engaged because this court was not acting as an EU trade mark court at the time the Defence and Counterclaim was filed on 27 October 2022, a necessary element of art.132(1). This court’s lack of status as an EU trade mark court was underlined by the fact that on 27 October 2022 the court had no jurisdiction over EU trade marks, only UK marks and UK comparables. The various Brexit provisions made no difference to that lack of jurisdiction.

Secondly, the inconsistency between art.67(1)(b) of the Withdrawal Agreement and paragraph 20 of Schedule 2A to the Trade Marks Act 1994must be resolved in favour of the latter. Art.67(1) is a provision of general effect, applying to all proceedings instituted before the end of the transition period (and proceedings related to them with the meaning of arts.29-31 of Brussels Recast), whereas Schedule 2A is a specialist provision directed to the law of trade marks.

Thirdly, Simon v Taché provides no guidance because the judge was concerned only with the general provision relating to Brussels Recast under art.67(1)(a) of the Withdrawal Agreement, not the more specialist provision under art.67(1)(b).

Fourthly, the 2019 Regulations lawfully amended the Trade Marks Act 1994 to add Schedule 2A, which is primary legislation. Schedule 2A came into force after the Withdrawal Agreement was concluded, so the Withdrawal Agreement must be read in the light of Schedule 2A.