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

KnitPro’s argument began with the fact that there were existing proceedings, the threat actions, instituted before the end of the transition period on IP completion day. Art.67(1)(b) expressly provides that the provisions of the Trade Mark Regulation regarding jurisdiction continue to apply to existing proceedings after the end of the transition period and this includes the whole of Chapter X, see Easygroup para [23], with no exceptions.

The same applies to new claims added to such existing proceedings after the end of that period, see Simon v Taché at [74].

It is irrelevant that the new claim in the present proceedings, the claim alleging infringement of the EU Chevron Mark, was added after this court ceased to be an EU trade mark court. There is an analogy to be drawn between these facts and those of Simon. In Simon it was argued that the new claim did not give rise to a stay because it had not become a “related claim” until after IP completion day. That argument was rejected by the judge.

In effect, KnitPro argued, the new claim was deemed to have been started at the same time as the Belgian claim. The position corresponded to the “relation-back” principle of English law, whereby a new claim, including a counterclaim, is deemed to have been started on the same date as the claim for the purposes of the Limitation Act 1980, see s.35(1) and (2). Similarly, in the present case the new claim started after IP Completion Day “related back” to the threats claim started beforehand.

The direct effect of art.67(1) cannot be limited by a statutory instrument, namely the 2019 Regulations, and so by Schedule 2A of the 1994 Act. They are inconsistent, but the direct effect of art.67(1) must prevail.

In written submissions from the parties invited by the court after the hearing, KnitPro supplemented its argument by saying that regulations that may be made by a Minister of the Crown in relation to art.67 are limited to provisions which either (a) implement that article, (b) deal with matters arising out of, or related to, that article, (c) supplement the direct effect of that article or (d) restate that article for the purpose of making the law clearer or more accessible. Section 8B of the European Union (Withdrawal) Act 2018, added by the European Union (Withdrawal Agreement) Act 2020, provides, to the extent that is relevant, as follows:

“8B Power in connection with certain other separation issues

(1)

A Minister of the Crown may by regulations make such provision as the Minister considers appropriate—

(a)

to implement Part 3 of the withdrawal agreement (separation provisions), [Part 3 includes art.67]

(b)

to supplement the effect of section 7A in relation to that Part, or [s.7A means s.7A of the 2018 Act as amended, which gives direct effect to the rights and procedures provided for by the Withdrawal Agreement]

(c)

otherwise for the purposes of dealing with matters arising out of, or related to, that Part (including matters arising by virtue of section 7A and that Part).

…

(3)

Regulations under this section may make any provision that could be made by an Act of Parliament.

(4)

Regulations under this section may (among other things) restate, for the purposes of making the law clearer or more accessible, anything that forms part of domestic law by virtue of—

(a)

section 7A above and Part 3 of the withdrawal agreement,

…”

KnitPro’s point was that although a Minister could implement or supplement the direct effect of the Withdrawal Agreement, deal with matters arising out of it or even restate aspects of that direct effect, no Minister has the power to make regulations which limit the direct effect. Nor can the direct effect of the Withdrawal Agreement in English domestic law be limited by any such regulation.