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

In Easygroup the Chancellor addressed an argument similar to that advanced by Crafts in this case, namely that after IP completion day no English court could sit as an EU trade mark court. The Chancellor was considering a different point, namely whether an English court could grant an EU-wide injunction after IP completion day in respect of pending proceedings. However, it seems to me that his analysis holds good here with regard to whether this court sits as an EU trade mark court in proceedings pending before IP completion day:

“[49] Mr Abrahams sought to answer this point by submitting that, after IP completion day, this court was no longer an EU trade mark court, because even though the repeals in Schedule 5 of the 2019 Regulations did not include the 2006 Regulations, by repealing the 2008 and 2016 Regulations that Schedule had necessarily by implication repealed the underlying 2006 Regulations. However, I do not consider that it is possible to say that the 2006 Regulations have somehow been impliedly repealed by Schedule 5 to the 2019 Regulations. Whilst the legislation giving effect to Brexit is not exactly clearly and coherently drafted, it would be surprising to say the least if the 2006 Regulations had been impliedly repealed by a statutory instrument made on 13 February 2019, when the 2018 Regulations, which had come into force a month earlier on 14 January 2019, had made detailed, albeit minor, amendments to the 2006 Regulations to ensure that they cross-referred to EU Regulation 2017/1001, hardly consistent with the 2006 Regulations being about to be repealed.

[50] In any event, even if the 2006 Regulations have somehow been impliedly repealed, I consider the submission that this court is no longer an EU trade mark court as regards pending proceedings is misconceived. It ignores the position as regards pending proceedings in circumstances where, when the 2019 Regulations came into force on IP completion day, 31 December 2020, the Withdrawal Agreement and the EU Withdrawal Acts 2018 and 2020 were all in force. Immediately prior to IP completion day, these proceedings were pending before this court, which was an EU trade mark court. Mr Abrahams’ submission did not really address how it was that this court ceased to have that status when paragraph 20 of Schedule 2A makes it clear that, as regards proceedings already pending before this court as an EU trade mark court on IP completion day, this court continues to be an EU trade mark court. Thus, paragraphs 20(3) and (4), even if they were limiting jurisdiction as Mr Abrahams contends, are obviously forward looking, in the sense that they are dealing with jurisdiction in pending proceedings after IP completion day and yet they refer to the relevant court in the United Kingdom as ‘the EU trade mark court’ not ‘the former EU trade mark court’. On the basis that this court remains an EU trade mark court for the purposes of pending proceedings, the clear intention of article 67 of the Withdrawal Agreement, which has full legal effect, is that this court should retain the same jurisdiction under EU Regulation 2017/1011 as it had before IP completion day.”

I see little force in Crafts’ argument that schedule 2A should override art.67 on the ground that the former is a specialist provision whereas the latter is general. The relevant part of art.67, paragraph 1(b) relates expressly to, among other regulations, the Trade Mark Regulation. To that extent it, too, is a provision with specialist effect.

Save that art.67(1) applies to new claims added to pending proceedings, I find only limited assistance from the judgment in Simon v Taché. The issue before the judge was whether art.67(1)(a) applied where the claim brought after IP completion day could not therefore have been “related” to the earlier claim until after IP completion day. The question of being “related” concerned “related actions” within the meaning of Section 9 of Brussels Recast and had nothing to do with “relating back” in an analogy with the Limitation Act 1980. As I understand Judge Cawson’s judgment, it did not matter that the later claim, “related” in the Brussels Recast sense, was made after IP completion day because (a) art.67 itself did not require that it should, (b) had that been a requirement the words “and in respect of proceedings or actions that are related to such legal proceedings” in art.67(1)(a) would have been otiose, (c) paragraph 1.1 of the European Commission’s ‘Notice to Stakeholders’ dated 27 August 2020 supports this view and (d) there is indirect support from other judicial rulings. None of these reasons have any bearing on the present case.

Nor do I think that a parallel can be drawn with s.35 of the Limitation Act 1980 and the English rules derived from it on claims which can be “related back”. The opening words of s.35 are: “For the purposes of this Act”.

I agree with the submission made on behalf of KnitPro that s.8B of the European Union (Withdrawal) Act 2018 indicates an intent on the part of Parliament that the direct effect of the Withdrawal Agreement in English law cannot be limited by regulations made by a Minister of State. It seems to me that this applies even if the regulations in question have the effect of supplementing primary legislation.

Ultimately, though, I think the answer is that although paragraph 20 of schedule 2A of the Trade Marks Act 1994 and art.67(1)(b) of the Withdrawal Agreement are not consistent with regard to the application of art.132 of the Trade Mark Regulation to pending proceedings, they can be reconciled. The two provisions overlap. The overlap does not of itself create a difficulty. Art.67(1)(b) provides for the continuing effect of art.132 as retained EU law in respect of proceedings instituted before the end of the IP completion day; paragraph 20 of schedule 2A does not. The net result is that art.132 has continuing effect.

As I have discussed, in broad terms art.132(1) requires that an EU trade mark court hearing any action listed in art.124 (other than for a declaration of non-infringement) shall stay the proceedings in circumstances such as the present one. I will therefore stay KnitPro’s counterclaim for infringement of the EU Chevron mark, the claim for threats in relation to the EU Chevron Mark and the claims for revocation and a declaration of invalidity in relation to the EU Chevron Mark.