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

This judgment is supplemental to that handed down in these proceedings on 16 June 2023 (“the Main Judgment”). It is given at the request of the defendants.

In an email dated 15 June 2023, the claimant’s counsel sought permission from this court to appeal the Main Judgment. He identified two grounds:

“1.

The Court should have found that, as there were no pending proceedings under EUTMR Article 124 as at IP Completion Day, this Court was not sitting as an EU trade mark Court prior to IP Completion Day and therefore has no jurisdiction after IP Completion Day over EU Trade Marks. Consequently, this Court has no jurisdiction to grant an application under EUTMR Article 132, or exercise any other power under the EUTMR.

2.

By reason of the previous ground, the discretion to grant a stay on case management grounds was exercised on a flawed basis.”

I refused permission to appeal for the reasons stated in Form N460.

The claimant has since filed a Notice of Appeal in the Court of Appeal. Four grounds for permission to appeal are advanced. Grounds 1 and 3 are materially the same as those in the email of 15 June 2023 quoted above. Grounds 2 and 4 are new, each of which alleges a failure in the Main Judgment to give reasons.

My attention has been drawn by the defendants to the following guidance from the Court of Appeal in English v Emery Reimbold & Strick Ltd [2002] EWCA Civ 605. Lord Phillips MR, giving the judgment of the Court, said:

“[25] Accordingly, we recommend the following course. If an application for permission to appeal on the ground of lack of reasons is made to the trial judge, the judge should consider whether his judgment is defective for lack of reasons, adjourning for that purpose should he find this necessary. If he concludes that it is, he should set out to remedy the defect by the provision of additional reasons refusing permission to appeal on the basis that he has adopted that course. If he concludes that he has given adequate reasons, he will no doubt refuse permission to appeal. If an application for permission to appeal on the ground of lack of reasons is made to the appellate court and it appears to the appellate court that the application is well founded, it should consider adjourning the application and remitting the case to the trial judge with an invitation to provide additional reasons for his decision or, where appropriate, his reasons for a specific finding or findings. Where the appellate court is in doubt as to whether the reasons are adequate, it may be appropriate to direct that the application be adjourned to an oral hearing, on notice to the respondent.”

Although the claimant referred to English in its skeleton argument before the Court of Appeal, it has not sought additional reasons from this court. However, the defendants have. I will therefore expand on the reasons given in the Main Judgment. To maintain brevity, I will assume that this judgment is read together with the Main Judgment, including the relevant statutory provisions and the definitions of terms.