IP-2020-000138 - [2023] EWHC 1914 (IPEC)

The Trade Mark Regulation creates the legal framework which governs EU trade marks. It explicitly leaves certain aspects of that governance to national law.

Art.123 of the Trade Mark Regulation requires Member States to designate national courts as EU trade mark courts. The (UK) Community Trade Mark Regulations 2006 (“the 2006 Regulations”) were made in the exercise of powers conferred on the Secretary of State by s.52 of the 1994 Act. Regulation 12 of the 2006 Regulations provided that in England and Wales, the High Court is designated as a Community trade mark court (now an EU trade mark court). This court, as a specialist list within the High Court, was therefore an EU trade mark court – at the least until IP completion day.

Art.124 of the Trade Mark Regulation (set out in the Main Judgment at [20]) gives to EU trade mark courts exclusive jurisdiction for the actions, counterclaims and applications for declarations listed in that article, among which are infringement actions:

“and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks”.

Thus, if the national law of the Member State of an EU trade mark court allows actions for unjustified threats of infringement of EU trade marks, the EU trade mark court has jurisdiction over such actions, which will be determined according to its national law.

Regulation 6(1) of the 2006 Regulations made available under the laws of the UK an action of unjustified threats of proceedings for infringement of an EU trade mark. Such threats fell to be determined under the terms of s.21 of the 1994 Act:

“6.

(1) The provisions of section 21 apply in relation to a Community trade mark as they apply to a registered trade mark.”

The change of name – Community trade mark to EU trade mark – introduced by the Trade Mark Regulation was never reflected in the 2006 Regulations, but it makes no difference.

It follows from the foregoing that when the claimant brought its claim in this court for unjustified threats on 11 December 2020, this court had jurisdiction over that claim as an EU trade mark court pursuant to art.124(a) of the Trade Mark Regulation and reg.6(1) of the 2006 Regulations. The merits of the claim are to be decided pursuant to s.21 of the 1994 Act.