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

As explained in the Main Judgment at [7], the claimant has initiated an application before the EUIPO for cancellation of the EU Chevron Mark. Therefore art.132(1) of the Trade Mark Regulation requires this court to stay actions referred to in art.124 relating to the EU Chevron Mark (other than an action for a declaration for non-infringement) unless special grounds apply. It was common ground that there are no special grounds.

As stated in the Main Judgment at [56], this court was obliged to stay the counterclaim for infringement of the EU Chevron Mark, the claim for threats in so far as it relates to the EU Chevron Mark and the claims for revocation and a declaration of invalidity in relation to the EU Chevron Mark.

The claimant’s ground 4 in the Grounds of Appeal filed in the Court of Appeal is:

“To the extent the Judge’s indication in refusing PtA that he would have granted the stay on case management grounds in any event is material, he failed to give any reasons for such indication. The judge did not consider, and so gave no reasons as to, whether he would have granted a stay of the entirety of the claim on case management grounds solely in the absence of a stay under Art 132.”

For the avoidance of doubt, I take the view that the reasons for staying the proceedings on case management grounds set out in the Main Judgment at [59] to [73] apply to all the claims before the court, including those claims which the court was obliged to stay pursuant to art.132(1) of the Trade Mark Regulation.

This is a case management decision. As stated in Form N460, although I would have given permission to appeal had the issues under the Trade Mark Regulation arisen in isolation, those issues are swept up in my decision on case management grounds. For that reason, permission to appeal was refused.