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

This created an inconsistency with para.20 of Schedule 2A to the 1994 Act. It was remarked upon by the Chancellor in Easygroup:

“[54] … the exclusions of Articles 128 and 132 are not relevant to the issue which the Court has to decide. The excluded provisions are all ones which required reciprocity with the EU IPO such as obligations to notify or deferring to the EU IPO and, as [counsel] said, one can see that at the time the 2019 Regulations were made the legislature may well have wanted to avoid any reciprocity with the EU IPO in the event of a no deal Brexit. As she also pointed out, it does appear that these exclusions from Articles 128 and 132 are inconsistent with Article 67.1 of the Withdrawal Agreement which provides that in pending proceedings the jurisdiction provisions in Chapter X of EU Regulation 2017/1001 will continue to apply without there being any such exclusions. However, that issue does not arise for determination in the present case so I need say no more about it.”

Art.67(1) was considered by Judge Cawson QC in Simon v Taché [2022] EWHC 1674 (Comm). The case related to Regulation 1215/2012 (“Brussels Recast”) under subparagraph (a) rather than the Trade Mark Regulation under subparagraph (b). The defendants challenged the jurisdiction of the court pursuant to art.29 of Brussels Recast because they had already commenced proceedings involving the same cause of action in Belgium. The claimant’s first argument was that art.29 did not apply by reason of art.67 of the Withdrawal Agreement since, although the Belgian proceedings had been instituted before the end of the transition period on 26 October 2020, the English proceedings had not become “related to” the Belgian proceedings until the issue of the claim form in England on 10 May 2021.

Judge Cawson said:

“[70] One necessarily begins with the language of article 67, which introduces two concepts. Firstly, legal proceedings instituted before the end of the transition period, and secondly, proceedings or actions that are related to such legal proceedings pursuant to articles 29, 30 and 31 of Brussels Recast. If the latter, in contrast to the former, were required to be instituted so as to give rise to the necessary relationship prior to the expiration of the transitional period, then one would have expected article 67 to have said so. More fundamentally, perhaps, if it were a requirement that the necessary relationship existed as at the end of the transition period, then Brussels Recast would have applied in any event without the need for article 67 because both sets of proceedings would necessarily have been instituted before the end of the transitional period and so Union law would have continued to have effect by virtue of articles 126 and 127 of the Withdrawal Agreement. On this basis, article 67 and the additional wording “and in respect of proceedings or actions that are related to such legal proceedings only makes sense if construed as encompassing a relationship that only arose after the end of the transitional period, cf Briggs [Civil Jurisdiction and Judgments, 7th ed (2021)] at p 20.

[71] Although perhaps of more limited weight following the exit of the UK from the EU, support for the defendants’ construction is provided by the European Commission’s ‘Notice to Stakeholders’ dated 27 August 2020 which, at para 1.1 thereof, comments as follows:

‘Article 67(1) of the Withdrawal Agreement specifies that EU rules on jurisdiction also apply to “proceedings or actions that are related to such legal proceedings” even if such related proceedings or actions are instituted after the end of the transition period. This addresses situations where proceedings involving the same cause of action and between the same parties are brought in the courts of a member state and the United Kingdom (“lis pendens”) before and after the end of the transition period respectively (or vice versa). The aim is to ensure that, in these cases, the EU rules on conflict of jurisdictions continue to apply where the court has been seised after the end of the transition period in an EU member state or in the United Kingdom.’

[72] Of particular significance is the aim identified in respect of the operation of article 67, namely to ensure that in respect of the situation where one set of proceedings is commenced prior to the end of the transition period, and another set of proceedings is commenced after the end of the transition period, the pre-existing regime should continue to apply to both sets of proceedings.

[73] Although there is no judicial authority on the point as such, I note that in On the Beach Ltd v Ryanair UK Ltd [2022] IL Pr 24, albeit in circumstances in which the parties were agreed on the point, Nugee LJ (sitting at first instance) at para 22 recorded that: ‘Since all the Irish proceedings were instituted before the end of the transition period, . . . article 30 of [Brussels Recast] applies to this application, notwithstanding that this action was commenced in England after the end of the transition period’ (emphasis added).

[74] Mr Ruddell, on behalf of the defendants, makes the point that article 67 preserves the applicability of Brussels Recast to ‘proceedings’ and not to particular claims in proceedings. On that basis, and having regard to what I consider to be the proper construction of article [67], I accept Mr Ruddell’s submission that Brussels Recast continues to apply to new claims added to proceedings commenced prior to 31 December 2020 and claims against new defendants joined to such proceedings after that date. This is also consistent with the approach of Morgan J in Benkelv East-West German Real Estate Holding [2021] IL Pr 16, para 43, albeit (again) on the basis of an agreed position as to the law, and is supported by the commentary in Briggs at pp 19-20.

[75] In short therefore, I do not consider it to be an objection to the potential application of articles 29 and 30 of Brussels Recast in the present case that the Belgian Proceedings and the English Proceedings might only have become related for the purposes of articles 29 and 30 after 31 December 2020.”