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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Sportswear Spa & Anor v Stonestyle Ltd [2006] EWCA Civ 380 (11 April 2006) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2006/380.html Cite as: [2006] ECC 27, [2006] EWCA Civ 380, [2006] Eu LR 1014, [2006] UKCLR 893, [2006] ETMR 66, [2007] FSR 2 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
MR JUSTICE WARREN
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE LONGMORE
and
LORD JUSTICE LLOYD
____________________
(1) SPORTSWEAR SpA (2) FOUR MARKETING LIMITED |
Respondents Claimants |
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- and - |
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STONESTYLE LIMITED |
Appellant Defendant |
____________________
Smith Bernal WordWave Limited
190 Fleet Street, London EC4A 2AG
Tel No: 020 7421 4040 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Guy Tritton (instructed by Wedlake Bell) for the Respondents
____________________
Crown Copyright ©
Lord Justice Lloyd:
Introduction
"Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market)."
The pleaded allegations
"16. Further or alternatively, the Claimants' assertions regarding Garment Codes do not constitute legitimate reasons under section 12(2) of the Trade Marks Act 1994 because the Garment Codes give effect to certain provisions of the [distribution agreements] which provisions have as their object the prevention, restriction or distortion of competition within the common market, contrary to Article 81 (1) of the EC Treaty.
17. In the premises, the Garment Codes form part of an illegal arrangement between the First Claimant and the Second Claimant to partition national markets and to fix prices within the European Union.
18. Further, or in the alternative, the Claimants' action in seeking to prevent the importation and sale of goods bearing the Registered Marks in the UK with the Garment Codes removed is action brought as the object, means or consequence of an agreement prohibited by Article 81 (1) of the EC Treaty and thus is itself contrary to Article 81 (1)."
The distribution agreements
"ART.2: AREA OF ACTIVITY
The Distributor's area of activity shall be the geographical territory of Great Britain, Northern Ireland, Eire and Iceland.
The Distributor engages himself to merchandise the goods supplied by SPW only in the above-mentioned area.
It's main and common interest for the parties the observance of the geographical area and the observance of the exclusive sales agreement in the above-mentioned area. Considering this common interest, the parties agree as follows:
a) SPW engages himself to mark all the goods supplied or a part of these ones with codes for the identification of the geographical area where the goods have been destined, so that it will be possible to verify eventual infringements to the sole rights agreed between SPW and his distributors.
b) SPW engages himself to introduce the same arrangements as these ones in all the contract that he shall agree or he shall renewal with the other geographical area distributors, so that SPW shall enforce the same sole rights for all the distributors.
c) The Distributor engages himself to forbid his customers to sell the goods supplied from SPW in geographical areas different from his one. The Distributor engages himself, under his responsibility to watch over his customers so that his customers will respect this prohibition.
If SPW can prove that some goods supplied by SPW have been sold in geographical areas different from the Distributor area, the Distributor will engage himself to compensate the damage suffered by SPW. The Distributor shall have to compensate also the SPW repurchase and import costs paid for goods sold in geographical areas different from the Distributor area. The payment of the damage will not be less than a double amount of the SPW's expenses for buying back the goods including all duty and transport charges."
"The Distributor must act in the interests of Sportswear Company SPA with all of his professional diligence, and in particular:
(b) he shall semi-annually supply Sportswear Company SPA with a written report of all information regarding the promotion of business, his customer portfolio, the market situation in his sector and the evolution of prices;
(e) he shall not deal with customers in different areas and/or with customers who use the products in other areas."
"The Distributor is free to set the sale price of the goods supplied by SPW. Besides, it's common interest for the parties that the sale price set by the Distributor are equal to the price set in the European Community Market. This common demand will be more interesting for the parties when Euro will come into force in Great Britain. When the Euro will come into force, all the values will be fixed in that currency and it will not be necessary to modify this contract. To satisfy the above-mentioned common interest, SPW shall communicate to the Distributor the prices usually set in the rest of the European community so that the Distributor shall be able to set similar prices."
"ART. 13: BRAND PROTECTION
13.1 Brand Protection management.
SPW Company will contribute a maximum xxx per annum to allow Four Marketing to investigate and deal with counterfeit and parallel issues. Four Marketing will undertake this by employing a brand protection manager and or through established brand protection companies.
This amount will include a test purchase budget with a maximum xxx per year (list to be provided to SPW).
Four Marketing will provide SPW Company with quarterly statements, which will itemise all costs associated with this activity. Payment will be at 30 days at month end.
13.2 Legal Costs.
13.2 Any brand protection activity, which will involve legal costs, must be sanctioned by SPW Company.
All legal costs will be invoiced xxx.
Any settlement whether derived by legal action or not will be split equally between SPW Company and Four Marketing."
The Treaty provisions
"28. Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States.
29. Quantitative restrictions on exports and all measures having equivalent effect shall be prohibited between Member States.
30. The provisions of Articles 28 and 29 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States."
"1. The following shall be prohibited as incompatible with the common market: all agreements between undertakings, decisions by associations of undertakings and concerted practices which may affect trade between Member States and which have as their object or effect the prevention, restriction or distortion of competition within the common market, and in particular those which:
(a) directly or indirectly fix purchase or selling prices or any other trading conditions;
(b) limit or control production, markets, technical development, or investment;
(c) share markets or sources of supply;
(d) apply dissimilar conditions to equivalent transactions with other trading parties, thereby placing them at a competitive disadvantage;
(e) make the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.
2. Any agreements or decisions prohibited pursuant to this Article shall be automatically void."
which is a necessary allegation, but it is now agreed that this is a point which could be cured by amendment. The Appellant had refused to accept this before the hearing below, but did so during the hearing, and has since put forward a draft amendment intended to cure this defect. The judge did not decide whether this was sufficient, since it did not arise in the light of his decision on another aspect of the case. If paragraph 16 is, in principle, allowed to stand in the Defence, it will have to be amended, and the issue will therefore have to be resolved as to whether the proposed amendment is adequate. Subject to that point, it is accepted that the striking out application, and the appeal, must proceed on the basis that the agreements are in breach of Article 81.
The requirement of a sufficient nexus
"[89] Now the only agreements upon which the defendants rely as infringing this Article are certain licence agreements, to which I will refer in a little more detail below, under which certain manufacturers of spare parts engage to pay royalties to the plaintiffs on spare parts manufactured and sold by them, and there is, as it seems to me, a very short answer to the defence based on this Article.
[90] The defendants have not entered into such an agreement, so that what they are saying, in effect, is this: 'because you have entered into agreements with X, Y and Z, which are void under Article [81], you are debarred from exercising any of the rights which the law confers on you in respect of infringements by us'. The answer to this is, I think, conveniently set out in the judgment of Sir Robert Megarry, V.C. in Imperial Chemical Industries v. Berk Pharmaceuticals, [1981] FSR 1, [1981] 2 CMLR 91, where he struck out a paragraph in the defence which pleaded that by reason of breaches of Article 86 (in that case) [now Article 82] the plaintiffs were debarred from relief against passing-off on the ground of the lack of nexus between the abuse pleaded and right claimed by the defendants.
[91] That seems to be equally applicable here, where the defendants claim the right to do what they would otherwise be prohibited from doing because of some contractual relationship which has been entered into between the plaintiffs and third parties.
[92] The learned Vice-Chancellor observed [see [1981] FSR at p 6]:
"Article [82] prohibits any abuse which falls within the ambit of the Article. Many other acts by the plaintiffs are also prohibited, whether by statute, common law or equity, or under the Treaty. I do not think that it could be said that a person in breach of some statutory duty or other prohibition thereupon becomes an outlaw, unable to enforce any of his rights against anyone. If the plaintiffs are imposing unfair selling prices in that they charge too much for their product, I cannot see why this breach of the prohibitions of Article [82] means that the defendants are thereby set free from any liability to the plaintiffs if they, the defendants, commit the tort of passing off (or, indeed, any other tort) against them".
[93] That seems to me equally applicable here and to provide a complete answer to any defence based on Article 81."
"28. It should be noted, however, that according to the case-law of the Court (see, in particular, Hoffmann-La Roche, paragraph 10, Case 3/78 Centrafarm v American Home Products [1978] ECR 1823, paragraphs 21 and 22, and Bristol-Myers Squibb, paragraphs 49 and 50) Article 36 [now 30] does not permit the owner of the trade mark to oppose the reaffixing of the mark where such use of his trade mark rights contributes to the artificial partitioning of the markets between Member States and where the reaffixing takes place in such a way that the legitimate interests of the trade mark owner are observed. Protection of those legitimate interests means in particular that the original condition of the product inside the packaging must not be affected, and that the reaffixing is not done in such a way that it may damage the reputation of the trade mark and its owner.
29. It follows that under Article 36 [now 30] of the Treaty the owner of trade mark rights may rely on those rights to prevent a third party from removing and then reaffixing or replacing labels bearing the trade mark, unless:
a) it is established that the use of the trade mark rights by the owner to oppose the marketing of the relabelled products under that trade mark would contribute to the artificial partitioning of the markets between Member States;
b) it is shown that the repackaging cannot affect the original condition of the product, and
c) the presentation of the relabelled product is not such as to be liable to damage the reputation of the trade mark and its owner."
"[Loendersloot] considers that the relabelling is necessary for two reasons. First, it is essential in order to make it possible to remove the identification numbers placed on the bottles by Ballantine and others, that being necessary to preserve the anonymity of the dealers engaged in parallel trade. Without that anonymity Loendersloot would be unable to obtain supplies from traders authorized by Ballantine and others, who fear the imposition of sanctions on them by the producers if they know the identity of the dealers engaged in parallel sales. Second, relabelling is necessary in order to make it possible to remove the word 'pure' or alter the references to the importer, so as to permit marketing in the country of destination."
"39. With respect to the removal and reaffixing or replacing of labels in order to remove the identification numbers, Ballantine and others observe that that removal is not necessary to enable the products in question to be marketed on the markets of the various Member States in accordance with the rules in force there.
40. It should be observed that, while that statement is correct, removal of the identification numbers might nevertheless prove necessary, as Loendersloot has observed, to prevent artificial partitioning of the markets between Member States caused by difficulties for persons involved in parallel trade in obtaining supplies from distributors of Ballantine and others for fear of sanctions being imposed by the producers in the event of sales to such persons. Even if, as Ballantine and others state, such conduct on the part of the producers would be in breach of the Treaty rules on competition, it cannot be excluded that identification numbers have been placed on products by producers to enable them to reconstruct the itinerary of their products, with the purpose of preventing their dealers from supplying persons carrying on parallel trade.
41. It must also be acknowledged, however, that for the producers application of identification numbers may be necessary to comply with a legal obligation, in particular under Council Directive 89/396/EEC of 14 June 1989 on indications or marks identifying the lot to which a foodstuff belongs (OJ 1989 L 186, p. 21), or to realise other important objectives which are legitimate from the point of view of Community law, such as the recall of faulty products and measures to combat counterfeiting.
42. In those circumstances, where identification numbers have been applied for purposes such as those mentioned in the preceding paragraph, the fact that an owner of trade mark rights makes use of those rights to prevent a third party from removing and then reaffixing or replacing labels bearing his trade mark in order to eliminate those numbers does not contribute to artificial partitioning of the markets between Member States. In such situations there is no reason to limit the rights which the trade mark owner may rely on under Article 36 [now 30] of the Treaty.
43. Where it is established that the identification numbers have been applied for purposes which are legitimate from the point of view of Community law, but are also used by the trade mark owner to enable him to detect weaknesses in his sales organization and thus combat parallel trade in his products, it is under the Treaty provisions on competition that those engaged in parallel trade should seek protection against action of the latter type."
"21. I reject these arguments based on achieving the overall objective of Community competition law as a justification for the pleading relying on Article 81. So far as I can see, Article 81 is not relevant to these arguments. What the Defendants complain about is the enforcement by Sportswear of its trade mark in circumstances where, they say, the purpose of enforcement is to "enable them to reconstruct the itinerary of their products, with the purpose of preventing their dealers from supplying persons carrying on parallel trades" (as it is put in Loendersloot at paragraph 40). That may or may not be a breach of Community competition law. But it is, in my judgment, not to the point in relation to these arguments whether, when carrying out that purpose, the Claimants are parties to an agreement which happens to infringe Article 81. If the Defendants are right in saying that there is artificial partitioning of markets they may have good defences to the infringement actions under Community law but those will be defences which have nothing to do with Article 81. If they do not have good defences under Community law apart from Article 81, I fail to see how Article 81 gives them any (subject to the separate submissions which I address at [24] below).
22. On that basis, Article 81 is, in my judgment, irrelevant also to the applicability or otherwise of section 12(2) Trade Marks Act 1994. The argument has to be that the enforcement of the trade mark for illegitimate reasons means that the conditions of section 12(2) are not fulfilled. In a case where it would be a breach of Community law to enforce the trade mark (a possibility envisaged in Loendersloot) I can see that section 12(2), which needs to be construed against the background of Community law, might also need to be construed in such a way that legitimate reasons have to be held not to exist; but if Article 81 is not relevant to determining whether there is a relevant breach of Community law, then it cannot be relevant to section 12(2) either.
23. But even if, contrary to my view, Article 81 were, somehow, relevant, I agree with Counsel for the Claimants when he says that, if there is both a legitimate and an illegitimate purpose in seeking to enforce trade mark rights, then section 12(2) applies (unless the illegitimate purpose is so serious as to render enforcement altogether a breach of Community law) but there may, in giving effect to the illegitimate purpose, be a cause of action against the trade mark proprietor under Article 81."
"Finally, an agreement between producer and distributor which might tend to restore the national divisions in trade between Member States might be such as to frustrate the most fundamental [objectives[1]] of the Community. The Treaty, whose preamble and content aim at abolishing the barriers between states, and which in several provisions gives evidence of a stern attitude with regard to their reappearance, could not allow undertakings to reconstruct such barriers. Article 85(1) is designed to pursue this aim, even in the case of agreements between undertakings placed at different levels in the economic process."
"The applicants maintain more particularly that the criticized effect on competition is due not to the agreement but to the registration of the trade-mark in accordance with French law, which gives rise to an original inherent right of the holder of the trade-mark from which the absolute territorial protection derives under national law.
Consten's right under the contract to the exclusive user in France of the GINT trade mark, which may be used in a similar manner in other countries, is intended to make it possible to keep under surveillance and to place an obstacle in the way of parallel imports. Thus, the agreement by which Grundig, as the holder of the trade-mark by virtue of an international registration, authorized Consten to register it in France in its own name tends to restrict competition.
Although Consten is, by virtue of the registration of the GINT trade-mark, regarded under French law as the original holder of the rights relating to that trade-mark, the fact nevertheless remains that it was by virtue of an agreement with Grundig that it was able to effect the registration.
That agreement therefore is one which may be caught by the prohibition in Article 85(1). The prohibition would be ineffective if Consten could continue to use the trade-mark to achieve the same object as that pursued by the agreement which has been held to be unlawful.
Articles 36, 222 and 234 of the Treaty relied upon by the applicants do not exclude any influence whatever of Community law on the exercise of national industrial property rights.
Article 36, which limits the scope of the rules on the liberalization of trade contained in Title I, Chapter 2, of the Treaty, cannot limit the field of application of Article 85. Article 222 confines itself to stating that the 'Treaty shall in no way prejudice the rules in Member States governing the system of property ownership'. The injunction contained in article 3 of the operative part of the contested decision to refrain from using rights under national trade-mark law in order to set an obstacle in the way of parallel imports does not affect the grant of those rights but only limits their exercise to the extent necessary to give effect to the prohibition under Article 85(1). The power of the Commission to issue such an injunction for which provision is made in Article 3 of Regulation no 17/62 of the Council is in harmony with the nature of the Community rules on competition which have immediate effect and are directly binding on individuals.
Such a body of rules, by reason of its nature described above and its function, does not allow the improper use of rights under any national trade-mark law in order to frustrate the Community's law on cartels."
"7. The exercise of a trade-mark right is particularly apt to lead to a partitioning of markets, and thus to impair the free movement of goods between states which is essential to the common market. …
9. … A trade-mark right, as a legal entity, does not in itself possess those elements of contract or concerted practice referred to in Article 85(1). Nevertheless, the exercise of that right might fall within the ambit of the prohibitions contained in the Treaty each time it manifests itself as the subject, the means or the result of a restrictive practice. When a trade-mark right is exercised by virtue of assignments to users in one or more Member States, it is thus necessary to establish in each case whether such use leads to a situation falling under the prohibitions of Article 85.
11. Article 85, therefore, is applicable to the extent to which trade-mark rights are invoked so as to prevent imports of products which originate in different Member States, which bear the same trade-mark by virtue of the fact that the proprietors have acquired it, or the right to use it, whether by agreements between themselves or by agreements with third parties. Article 85 is not precluded from applying merely because, under national legislation trade-mark rights may originate in legal or factual circumstances other than the abovementioned agreements, such as registration of the trade-mark, or its undisturbed use."
"26. Furthermore, the proprietor of an exclusive right may not rely on his right if the prohibition on importation or marketing of which he wishes to avail himself could be connected with an agreement or practice in restraint of competition within the Community contrary to the provisions of the Treaty, in particular to those of Article 85.
27. Although a right to a design, as a legal entity, does not as such fall within the class of agreements or concerted practices envisaged by Article 85(1), the exercise of that right may be subject to the prohibitions contained in the Treaty when it is the purpose, the means or the result of an agreement, decision or concerted practice."
"19. It should be borne in mind, first of all, that the Treaty has created its own legal order, which is integrated into the legal systems of the Member States and which their courts are bound to apply. The subjects of that legal order are not only the Member States but also their nationals. Just as it imposes burdens on individuals, Community law is also intended to give rise to rights which become part of their legal assets. Those rights arise not only where they are expressly granted by the Treaty but also by virtue of obligations which the Treaty imposes in a clearly defined manner both on individuals and on the Member States and the Community institutions (see the judgments in Case 26/62 Van Gend en Loos [1963] ECR 1, Case 6/64 Costa [1964] ECR 585 and Joined Cases C-6/90 and C-9/90 Francovich and Others [1991] ECR I-5357, paragraph 31).
20. Secondly, according to Article 3(g) of the EC Treaty (now, after amendment, Article 3(1)(g) EC), Article 85 of the Treaty constitutes a fundamental provision which is essential for the accomplishment of the tasks entrusted to the Community and, in particular, for the functioning of the internal market (judgment in Case C-126/97 Eco Swiss [1999] ECR I-3055, paragraph 36)."
Litigation pursuant to an agreement in breach of Article 81
"The present proceedings have been brought pursuant to Clause 13 of the Distribution Contract and, in consequence of the existence of these proceedings, Mr Ghattaura has stopped selling STONE ISLAND clothing [certain losses to the Defendants in the two actions are then alleged]. Third parties (including the Defendant) are hindered and/or discouraged from engaging in parallel trade in the goods with the Garment Codes removed."
"33. However, in the present case, the Defendant relies on Clause/Article 13 as the agreement giving rise to the breach of Article 81 and not on any other agreement or concerted practice, as is made clear by the draft amended Defence. It has not, for instance, been argued by the Defendant that the mere bringing of these two sets of proceedings by the Claimants is a breach of Article 81. The Defence is that these proceedings have been brought "pursuant" to the agreement. But, on my reading of Clause/Article 13 that is not the case. The proceedings are not, so far as I can see, brought pursuant to that Clause/Article at all since, as just pointed out, there is no obligation on either party to commence proceedings. Moreover, as also pointed out, the provision is capable of operating perfectly legally. On these grounds, I would refuse to allow the amendment to the Defence. I would strike out the existing Defence also since the reference in it to the "agreement" is, without the particulars provided in the draft amended Defence, insufficiently particularised (and it has, in any event, been made clear, by the draft amendment, that the agreement referred to is the 2004 Distribution Agreement)."
"They say that if this is so, the present proceedings are or have become a tool used illegitimately by the claimants to further an objective which is contrary to the provisions of the Treaty of Rome. This gives them not only a defence to the current proceedings but an entitlement to claim compensation. Importantly, the defendants argue that this defence and counterclaim is available to them even if (which they do not admit) they have infringed the claimants' trade mark rights. The effect of success on these grounds may be, therefore, to restrict the right of proprietors of the trade marks in issue to enforce them against infringers, at least to the extent that such enforcement is a part of an illicit concerted practice."
"16. These are powerful and attractive arguments. If, pursuant to Article 7(2) of the Trade Mark Directive and the line of cases ending in Paranova, it is legitimate to use a trade mark in certain circumstances to restrict or interfere with intra-community trade in the proprietor's own goods, how can it offend against the provisions of Article 81 if two or more trade mark owners collaborate in the enforcement of their rights? If the defendants are right, the trade mark owners are deprived of their legal rights to object to infringement.
17. However, the issues are not as simple as the claimants' arguments would suggest. Most of the numerous cases in the ECJ on exhaustion of intellectual property rights involved the argument that the proprietor was entitled to enforce his national rights. To stop a patentee from suing an importer of his products under his national patent rights was to deprive the proprietor of some of those rights. But this argument has not prevailed. Save in very special circumstances, of which Radio Telefis Eireann and Independent Television Publications Ltd v. European Commission [1995] ECR I-743 (Magill II) may be an example, the Treaty of Rome does not take away a proprietor's property rights but it may affect the way he exploits them. Furthermore it is not sound to argue that because a trader can do something alone he must be free to do the same thing in concert with others. A single trader acting alone, assuming he does not hold a dominant position in the market, has the right to raise and lower prices as he wishes. He can refuse to buy from or sell to anyone he likes, even if his objective is to harm competitors and prevent importation of goods. But he may well be prohibited from agreeing with others to form a competition-distorting cartel to do all or any of these things. This is not surprising. Our law of conspiracy recognises that in trade, as in war, it is easier to fight one to one than against a phalanx. Similarly, in many respects provisions in the Treaty are designed to enforce a level playing field between competitors. This does not take away from the individual trader the right to raise or lower prices. All it does is prevent him from obtaining the additional commercial weight of working in collaboration with others. As Mr Green puts it, litigation embarked upon by individual traders is unlikely to have the same form and intensity as litigation embarked upon by them as a group, nor will it have the same economic effect."
Later the judge said this, at paragraph 20:
"20. … But it is the co-operation with others to effect the illicit purpose which offends against Article 81. The defendants here are not complaining of the enforcement of the claimants' rights per se. The fact that trade mark law provides a tool which makes it easy to achieve an offensive end does not legitimise the co-operation. On the contrary, the fact that these rights can easily be used to impede free movement of goods within the EEA may make them attractive tools to a group of co-operatively-minded traders who wish to achieve that objective. The choice of those tools may throw light on the purpose of the co-operation. It is not the trade mark rights which offend against the provisions of Article 85(1) but the co-operative use to which they are put. The ends may contaminate the means. Even though Silhouette, Article 7(2) of the Trade Mark Directive and Paranova all allow a proprietor to hinder the free movement of his own goods to some extent, the ability to do this on his own does not mean that he is similarly entitled to club together with others so as to put in place a collaborative attack on parallel importers."
The judge then quoted paragraphs 7 and 9 from Sirena v Eda, set out at paragraph 45 above.
"22. Nor is it accurate to say, as the claimants do, that the defendants in these proceedings are attempting to deprive them of their right to litigate. Once again, all that the defendants can complain of is the alleged concerted practice and its implementation by the claimants. Even if the pleadings are allowed to be amended and the defendants win at the trial, that does not mean that the individual trade mark owners are deprived of the right to sue for infringement. Mr Green concedes, as he has to, that they can. The impact of an adverse finding would be to prevent them from litigating in concert. This may create practical difficulties. If bringing proceedings in concert is prohibited but bringing them individually and independently is not, how do you distinguish one from the other? … So here, if the amendments are allowed and the concerted practice is proved, any relief granted will have to be carefully worded to prevent the collaboration but without taking away the right to sue for infringement of trade mark."
His conclusion on this point is at paragraph 25:
"25. It appears to me that if there was a concerted practice as alleged, if the claimants here were parties to it and if the commencement or continuation of these proceedings is part of that concerted practice, it is at least arguable in the current state of European law that the defendants will have a defence or a claim for compensation. As I have indicated above, even if the defendants make out all of their allegations, there could well be difficult questions of what relief would be appropriate on their counterclaim but that is not a matter on which I have been addressed."
Conclusion
Lord Justice Longmore
Lord Justice Waller
Note 1 The report has “objections”, but this is a slip in translation from the French “objectifs”. [Back]