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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors  EWHC 1553 (Ch) (19 May 2014)
Cite as:  EWHC 1553 (Ch)
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INTELLECTUAL PROPERTY and
COMMUNITY TRADE MARK COURT
Strand, London, WC2A 2LL
B e f o r e :
| HEARST HOLDINGS INC.
FLEISCHER STUDIOS INC.
|- and -
THE PARTNERSHIP (TRADING) LIMITED
U WEAR LIMITED
J FOX LIMITED
Hearing dates: 6th May 2014
Crown Copyright ©
Mr. Justice Birss :
i) Under Article 109 of the CTMR;
ii) Under Article 104 of the CTMR;
iii) Under Article 28 of Council Regulation 44/2001 (the so called "Brussels I" Regulation).
Simultaneous and successive civil actions on the basis of Community trade marks and national trade marks.
1. Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seised on the basis of a Community trade mark and the other seised on the basis of a national trade mark:
(a) the court other than the court first seised shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;
(b) the court other than the court first seised may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.
Specific rules on related actions
(1) A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.
Lis pendens – related actions
(1) Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the first court seised is established.
(2) Where the jurisdiction of the court first seised is established any court other than the court first seised shall decline jurisdiction in favour of that court.
(1) Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings.
(2) Where these actions are pending at first instance, any court other than the court first seised may also, on the application of one of the parties, decline jurisdiction if the court first seised has jurisdiction over the actions in question and its law permits the consolidation thereof.
(3) For the purposes of this Article, actions are deemed to be related if they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings
Article 109 CTMR
Article 104 CTMR
Article 28 Brussels I
7. Accordingly the application for trade mark protection by the claimants represented an attempt to obtain indefinite protection via the law of trade marks in a well known cartoon character in which as of the date of application it had no rights in the character Betty Boop which were either owned by third parties or had expired.
8. Such an application is thus to be characterised as one made in bad faith.
"I have already found that the words Betty Boop and her visual image were distinctive by 2009. The earliest marks were filed in 1992, well after the claimants merchandising work began. Although the distinctive nature of the signs will have grown over the years since the claimants work began, there is no basis in the evidence to say that the signs had not acquired sufficient distinctiveness by the time the marks were registered to be valid in accordance with the proviso to s. 31 or with Article 73. I reject the invalidity attacks." [paragraph 140]