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

Art.132(1) of the Trade Mark Regulation (set out in the Main Judgment at [19]) falls under Chapter X of the Trade Mark Regulation. This court is obliged to apply art.132(1) in respect of any action before the court relating to the EU Chevron Mark currently being litigated before the EUIPO – but of course only if art.132(1) is engaged.

The claimant’s complaint of a lack of reasons in its Ground 2 notionally concerns only whether this court ever had jurisdiction to sit as an EU trade mark court with regard to the claimant’s action for unjustified threats. For the reasons I have given, it did before IP completion day and continues to do so. However, bundled within that complaint is a significant proposition which has nothing to do with jurisdiction. It is that art.132(1) of the Trade Mark Regulation is not engaged because the action brought by the claimant before IP completion day in respect of threatened infringement proceedings is not a species of action listed in art.124 of the Trade Mark Regulation.

Art.124 is set out in the Main Judgment at [20]. An action for threatened infringement proceedings regarding EU trade marks is plainly listed under paragraph (a) of art.124. Therefore art.132(1) is engaged in relation to the claimant’s claim for unjustified threats in respect of the EU Chevron Mark. It is also engaged in relation to the related legal proceedings, namely the claims for infringement, revocation and a declaration of invalidity in respect of the EU Chevron Mark.

As clearly implied by paragraphs [22] and [56] of the Main Judgment, I disagree with a contrary view expressed in the Karet Judgment at [61]. In my opinion, the clear wording of art.124(a) of the Trade Mark Regulation provides a cogent reason not to follow Mr Karet’s shortly stated view.