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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Crafts Group LLC v M/S Indeutsch International & Anor [2024] EWCA Civ 87 (08 February 2024) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2024/87.html Cite as: [2024] EWCA Civ 87 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY ENTERPRISE COURT
His Honour Judge Hacon
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE ARNOLD
and
MR JUSTICE COBB
____________________
CRAFTS GROUP LLC | Claimant/ Appellant |
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| - and - |
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| (1) M/S INDEUTSCH INTERNATIONAL (2) M/S KNITPRO INTERNATIONAL |
Defendants/Respondents |
____________________
Guy Hollingworth (instructed by Wiggin LLP) for the Respondents
Hearing date : 30 January 2024
____________________
Crown Copyright ©
Lord Justice Arnold:
Introduction
Background
The legal context
The parties
Crafts
Americana
Group,
Inc. For present purposes it is unnecessary to distinguish between the two companies, and I shall refer to them both as "
Crafts".
group.
Prior to 22 February 2018 the First Defendant was the registered proprietor of the trade marks referred to below, and since that date the Second Defendant has been the registered proprietor of those trade marks. For present purposes it is largely unnecessary to distinguish between the Defendants, and I shall refer to them both individually and collectively as "KnitPro".
The parties' commercial relationship
Crafts
with brass knitting needles. The parties subsequently collaborated on the design and production of knitting needles and crochet hooks made from DymondWood, a wood/plastic composite, which bore a coloured chevron pattern. (
Crafts
says that the appearance of the pattern was not consistent and depended on the angle of view, the size and shape of the product and variations in the DymondWood material, but for present purposes that point can be ignored.) KnitPro named this range of knitting needles and crochet hooks "Symfonie Wood". KnitPro started to supply
Crafts
with Symfonie Wood knitting needles and crochet hooks in November 2007.
Crafts
on an exclusive basis for the North American market while KnitPro would have the exclusive right to sell the products outside the USA and Canada.
Crafts
applied to United States Patent and Trade Mark Office to register a coloured chevron pattern as a trade mark.
Crafts
began to sell knitting needles and crochet hooks in competition with those made by KnitPro.
The Trade Marks
i) No. 8 884 264 for the figurative sign shown below accompanied by the description "The Mark consist [sic] of a repeated geometric design" ("the EU Chevron Mark").
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ii) No. 8 884 348 for the figurative sign shown below accompanied by the description "The Mark consist [sic] of the colours purple, orange, blue, yellow and green in a repeated pattern" ("the EU Symfonie Mark").

The EUIPO invalidity proceedings
Crafts
applied to the Cancellation Division of what is now EUIPO seeking a declaration of invalidity in respect of the EU Chevron Mark on the grounds of non-compliance with Article 7(1)(a) and (b) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version).
Crafts
contended that the graphical representation of the EU Chevron Mark did not comply with Article 4 of Regulation 207/2009, and hence Article 7(1)(a), because it was not clear, precise, self-contained, easily accessible, intelligible, durable and objective. In the alternative
Crafts
contended that the EU Chevron Mark was devoid of distinctive character and therefore did not comply with Article 7(1)(b). KnitPro disputed both contentions, but contended in the alternative pursuant to Article 7(3) that, if the EU Chevron Mark was devoid of inherent distinctive character, it had acquired a distinctive character through use.
Crafts'
application. It held that the EU Chevron Mark complied with both Article 7(1)(a) and Article 7(1)(b). It did not consider whether, if the EU Chevron Mark lacked inherent distinctive character, it had acquired a distinctive character.
Crafts
appealed. By a decision dated 5 November 2015 in Case R 1814/2014-1 the First Board of Appeal upheld the appeal on the ground that the EU Chevron Mark was devoid of distinctive character and remitted the case to the Cancellation Division to determine the issue under Article 7(3).
Crafts
cross-appealed. By a judgment dated 6 October 2021 in Case T-124/20 M/S Indeutsch International v Office of the European Union for Intellectual Property [EU:T:2021:668] the General Court annulled the Grand Board of Appeal's decision on the ground that the Board had failed to decide whether the EU Chevron Mark complied with Article 7(1)(a), which was a logical precursor to deciding whether it complied with Article 7(1)(b) and, if not, whether it was saved by Article 7(3).
KnitPro's takedown requests
Crafts
launched a range of wooden knitting needles and crochet hooks that have their surface decorated with a blue and green chevron pattern and are sold under the name "Caspian". In about November 2014
Crafts
started selling its Caspian knitting needles and crochet hooks through the Amazon UK website.
Crafts
was selling its Caspian knitting needles and crochet hooks through Amazon UK. KnitPro considered that this infringed the EU Trade Marks, and in June 2015 KnitPro made a takedown request to Amazon on that basis. Amazon removed the listing of the Caspian products from Amazon UK on 14 July 2015.
Crafts'
trade mark attorneys wrote to KnitPro and their solicitors alleging that KnitPro's takedown request amounted to an unjustified threat of proceedings for infringement of the EU Chevron Mark contrary to section 21 of the 1994 Act. On 29 July 2015 KnitPro's solicitors replied denying the allegation.
Crafts
then launched another range of wooden knitting needles and crochet hooks that have their surface decorated with a plain chevron pattern and are sold under the name "Sunstruck". In about August 2015
Crafts
started selling its Sunstruck knitting needles and crochet hooks though Amazon UK. KnitPro considered that this infringed the EU Chevron Mark, and in October 2015 KnitPro made a takedown request to Amazon on that basis. On 30 November 2015 Amazon removed the listing of the Sunstruck products from Amazon UK.
These proceedings
Crafts
took no action in respect of its allegation of threats for over five years. The next that KnitPro heard about this allegation was when solicitors newly instructed by
Crafts
wrote to KnitPro's solicitors on 12 November 2020 repeating the allegation.
Crafts
issued a claim form in IPEC, and filed Particulars of Claim, seeking relief in respect of unjustified threats of proceedings for infringement of the EU Trade Marks against the First Defendant. On 8 January 2021 the claim form and Particulars of Claim were amended to add allegations of unjustified threats of proceedings for infringement of the UK Trade Marks on the basis that the threats were continuing ones unless and until withdrawn. On 13 January 2021 the judge made an order giving
Crafts
permission to serve the amended claim form on the First Defendant outside the jurisdiction in India.
Crafts
permission to serve the re-amended claim form on the Second Defendant outside the jurisdiction in India. KnitPro were served on 3 August 2021.
"An EU trade mark court hearing an action referred to in Article 124 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 EU trade mark is already in issue before another EU 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."
Crafts
was aggrieved by them. In the Counterclaim KnitPro alleged that
Crafts
had infringed the EU Trade Marks and the UK Trade Marks and had passed off its goods for those of KnitPro. In support of these allegations KnitPro relied upon offers for sale and sale of the Caspian and Sunstruck products through three non-Amazon websites and through the Amazon.com website (sometimes referred to as the "Amazon US" website, although it offers delivery to countries other than the USA, including the UK). The Caspian products were alleged to infringe the Chevron Marks and the Symfonie Marks while the Sunstruck products were alleged to infringe the Chevron Marks. Although the pleading was unclear as to the dates of the offers for sale and sales relied upon, it is implicit from the allegations of infringement of both the EU Trade Marks and the UK Trade Marks that these were alleged to have occurred both before and after 31 December 2020. Moreover, it was expressly alleged that
Crafts
threatened and intended to continue to commit the acts complained of unless restrained by the court. In addition KnitPro alleged that the EU Trade Marks had an enhanced distinctive character and reputation in the EU, but did not limit the injunction to restrain infringement of the EU Trade Marks claimed to the UK.
Crafts
served a Reply and Defence to Counterclaim, together with an Additional Claim. In the Reply and Defence to Counterclaim
Crafts
denied infringement of any of the Trade Marks on various grounds, including (i) an allegation that the Trade Dress Rights Agreement permitted
Crafts
to use the signs complained of and (ii) a defence under section 11(2)(b) of the 1994 Act (descriptive use).
Crafts
also disputed that IPEC had been sitting as an EU Trade Mark Court in respect of its threats claim as at 31 December 2020, and accordingly disputed that IPEC had jurisdiction over claims for infringement of the EU Trade Marks given that the Counterclaim was made after that date. In the Additional Claim
Crafts
alleged that the UK Chevron Mark was invalidly registered pursuant to section 3(1)(a), (b) and (c) of the 1994 Act.
Crafts
also alleged that, if, contrary to its primary case, IPEC had jurisdiction over the EU Trade Marks, then the EU Chevron Mark was invalid on the same grounds mutatis mutandis (i.e. pursuant to Article 7(1)(a), (b) and (c) of Regulation 207/2009; section 3(1)(c) and Article 7(1)(c) prohibit registration of descriptive signs). In the alternative
Crafts
alleged that the Chevron Marks stood to be revoked on grounds of five years' non-use with effect from 11 August 2015 alternatively various later dates.
Crafts'
claim constituted pending proceedings falling within Article 124(b) of Regulation 2017/1001 as at 31 December 2020 and therefore IPEC had jurisdiction with respect to the EU Trade Marks. KnitPro also disputed that the Trade Dress Rights Agreement permitted
Crafts
to use the signs complained of. KnitPro denied that the Chevron Marks were invalid, and alleged that, even if they lacked inherent distinctive character, they had acquired a distinctive character through use. KnitPro also alleged that the allegation of invalidity pursuant to section 3(1)(c) was an abuse of process given that the corresponding ground had not been relied on by
Crafts
in the EUIPO proceedings. KnitPro disputed that the Chevron Marks had not been genuinely used for a five year period.
KnitPro's second application for a stay
Crafts'
application for a declaration of invalidity in respect of the EU Chevron Mark pursuant to Article 132(1) of Regulation 2017/1001 alternatively CPR rule 3.1(2)(f) (case management). This application came before the judge at a case management conference on 22 May 2023. Subject to the outcome of the application, the directions for trial were largely agreed between the parties.
The Main Judgment
"KnitPro's principal argument for a stay is based on its contention that art.132(1) of the Trade Mark Regulation applies. KnitPro submits that this court is obliged to stay the proceedings insofar as they relate to the EU Chevron Mark."
Crafts
disputed that IPEC had jurisdiction to order a stay under Article 132(1). The judge considered the applicability of Article 132(1) to the present case in the light of the relevant legislation at [19]-[56]. The judge expressed his conclusion as follows:
"55. Ultimately … I think the answer is that although paragraph 20 of schedule 2A of the Trade Marks Act 1994 and art.67(1)(b) of the Withdrawal Agreement are not consistent with regard to the application of art.132 of the Trade Mark Regulation to pending proceedings, they can be reconciled. The two provisions overlap. The overlap does not of itself create a difficulty. Art.67(1)(b) provides for the continuing effect of art.132 as retained EU law in respect of proceedings instituted before the end of the IP completion day; paragraph 20 of schedule 2A does not. The net result is that art.132 has continuing effect.
56. As I have discussed, in broad terms art.132(1) requires that an EU trade mark court hearing any action listed in art.124 (other than for a declaration of non-infringement) shall stay the proceedings in circumstances such as the present one. I will therefore stay KnitPro's counterclaim for infringement of the EU Chevron mark, the claim for threats in relation to the EU Chevron Mark and the claims for revocation and a declaration of invalidity in relation to the EU Chevron Mark."
"57. There remainCrafts'
threats claims which relate to the UK Chevron Mark and the EU and UK Symfonie Marks, KnitPro's counterclaim for infringement of the UK Chevron Mark and the EU and UK Symfonie Marks, KnitPro's counterclaim for passing off and
Crafts'
additional claim for a declaration of invalidity of the Chevron UK Mark and for revocation of that Mark.
58. KnitPro seeks a stay of those claims too pursuant to s.49(3) of the Senior Courts Act 1981 and CPR 3.1(2)(f)."
Crafts'
application for cancellation of the EU Chevron Mark would have on the UK Chevron Mark:
"61. The cancellation proceedings before the EUIPO are under art.7(1)(a) and (b). It was common ground that neither the second paragraph of art.54(3) of the Withdrawal Agreement nor paragraph 21A(4) of Schedule 2A applies. If the EU Chevron Mark is declared invalid by the EUIPO, the UK Chevron Mark will also be declared invalid.
62. The reverse is not necessarily the case: if the decisions of the EUIPO and appeals from them were to result in the EU Chevron Mark being found validly registered, neither the Withdrawal Agreement nor Schedule 2A of the Trade Marks Act 1994 require English courts to follow suit. KnitPro submitted that it would be an abuse of process forCrafts
to seek a declaration of invalidity of the UK Chevron Mark in those circumstances. It seems to me that, without deciding whether it would be an abuse, it is safe for me to assume that this court is unlikely to reach a different view on the validity of the registration of the UK Chevron Mark to that reached by EU tribunals. The material facts in this case relating to the provisions of the Trade Marks Act 1994 equivalent to art.7(1)(a) and (b) would not differ materially from those facts considered by the EU tribunals. It was part of
Crafts'
case on delay that the EU proceedings are likely to be decided finally by the CJEU and its judgment would be persuasive. The judgment from the General Court, before remission to the EUIPO Grand Board of Appeal, suggests that the challenge to validity under art.7(1)(a) of the Trade Mark Regulation may play a central part in the final result. To my knowledge, there is little case law on that provision. A judgment of the CJEU which turns on an analysis of this part of trade mark law is likely to be particularly persuasive."
"An analogy can be drawn with the present application insofar as it relates to the Chevron issues, i.e. the issues of infringement, validity, revocation for non-use and threats in respect of the EU and UK Chevron Marks. The analogy is not exact because in the case of patent proceedings, the outcome in the EPO may or may not be decisive of the issues before the English court. If there is a finding in the EPO that the patent in suit is valid, it resolves nothing. There is therefore a risk – the degree of risk will generally be difficult to assess – that a stay pending the outcome of the EPO proceedings will delay the claimant's right to relief to no purpose. By contrast, in the present case if the EU Chevron Mark is found to be valid by the European Tribunals, the validity of the registration of the EU Chevron Mark and very likely the UK Chevron Mark would no longer be issues before this court. If the EU Chevron Mark is found to be invalid, so will be the UK Chevron mark; infringement and revocation for non-use fall away. Of the Chevron issues, only the question of whether there was a threat on the facts would remain."
"Crafts'
estimate, on the assumption that validity of the EU Chevron Mark is finally resolved by the CJEU, is that a finding will be made in 5 years' time. That is probably a maximum, but I will assume that it is correct. If there were no stay of the present proceedings, the issues relating to the UK Chevron Mark, and the EU Chevron Mark if this court has jurisdiction, would be decided in about 9-10 months, subject to appeal. Five years must be added to that if there were a stay of the issues relating to the UK Chevron Mark."
Crafts'
contention that it would suffer irreparable harm if the proceedings were stayed. He calculated that, on the figures given by
Crafts,
it would suffer a loss of US$7,200 a year, making a total of $122,400 by June 2029. That equated to about £97,000, which was well within the IPEC damages cap. Moreover, he considered that, if
Crafts
had been concerned about suffering irreparable harm due to KnitPro's takedown notices, it would have taken prompt action in 2015. Its behaviour was more consistent with a willingness to live with any loss of sales and to claim compensation later.
"70. Thus, if the claims in this court relating to the EU and UK Chevron Marks are stayed pending the outcome of the European proceedings andCrafts
succeeds in those claims, it will be compensated for the loss caused by the takedown notices if and to the extent it is entitled to such compensation. No other relevant damage to
Crafts
has been identified.
71. If there is no stay, there will be a trial in several months' time and a second trial after the judgment of the CJEU to deal with the claims this court is required to stay under art.132(1) of the Trade Mark Regulation. A judgment in relation to Chevron claims in this court will at least in part be subsequently overtaken by the CJEU's judgment, possibly in substantial part, so the cost of dealing with such claims in this court would be wasted.
72. Therefore I take the view that the balance of justice favours a stay of all claims relating to the EU and UK Chevron Marks.
73. Next I consider the claims relating to the Symfonie Marks and for passing off. If those claims are stayed, the potential damage toCrafts
remains the same, none of it irreparable. The difference is that there would be one trial, not two. Self-evidently that would save costs, which is what KnitPro wants to do. It seems to me that the balance of justice favours staying those claims as well."
The Supplemental Judgment
Crafts
sought permission to appeal from the judge on two grounds. Ground 1 was that IPEC had no jurisdiction to order a stay under Article 132(1) of Regulation 2017/1001 because no proceedings within Article 124 were pending before it on 31 December 2020. Ground 2 was that, by reason of ground 1, the discretion to grant a stay on case management grounds had been exercised on a flawed basis. The judge refused permission on 27 June 2023 because, although he accepted that ground 1 would have merited consideration by the Court of Appeal, it was academic since a stay would have been granted anyway as a matter of case management.
Crafts
filed an appellant's notice seeking permission to appeal from this Court on four grounds. Grounds 1 and 3 were essentially the same as the two grounds on which
Crafts
had sought permission from the judge. Grounds 2 and 4 were new, alleging failures to give reasons. On 18 July 2023 KnitPro wrote to the judge drawing this to his attention and inviting him to consider giving additional reasons in accordance with the guidance given by this Court in English v Emery Reimbold & Strick Ltd [2002] EWCA Civ 605, [2002] 1 WLR 2409 at [23] (Lord Phillips of Worth Matravers MR giving the judgment of the Court). The judge acceded to this invitation and delivered the Supplemental Judgment.
Crafts
had brought its claim before 31 December 2020, IPEC continued to have jurisdiction in respect of the EU Chevron Mark, including jurisdiction under Article 132(1). The judge concluded by re-stating his view as to the effect of Article 132(1) in the present case as follows:
"31. 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.
32. 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."
"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."
Subsequent developments
Crafts
applied to this Court for permission to amend its grounds of appeal, including substituting a new ground 2 contending that the judge was wrong to hold that a threats action was within Article 124 and adding a new ground 2A contending that it was not open to the judge so to hold since Mr Karet had decided to the contrary and that conclusion was final between these parties.
Crafts
permission to appeal on all five grounds. I observed that in my view grounds 1, 2 and 2A were not academic, because, if the English courts had no jurisdiction over the EU Trade Marks, they ought not to be trying claims concerning them.
Crafts
both before and after 31 December 2020. Whether a claim for infringement of the UK Trade Marks lies for acts committed prior to 31 December 2020 is perhaps open to argument, but the claim for passing off will certainly encompass acts committed by
Crafts
both before and after that date.
The appeal
Crafts
submitted that the developments I have outlined in paragraphs 47-50 above had fundamentally changed the complexion of the case, such that the judge's exercise of his discretion with respect to case management could no longer stand. Although counsel for KnitPro valiantly argued to the contrary, I agree with this. The judge was faced with a case which included a claim for infringement of the EU Trade Marks and an application primarily based on Article 132(1) which he held obliged him to grant a stay in respect of all claims concerning the EU Chevron Mark. We are now concerned with a case in which there is no claim for infringement of the EU Trade Marks and it is conceded that Article 132(1) does not apply. Thus the case is significantly more UK-centric than it was at the time of the application before the judge.
Crafts'
alternative contention that the judge's exercise of his discretion to order a stay on the case management basis was flawed because it was affected by his conclusion on the Article 132(1) issue.
Crafts
submitted that this Court should re-exercise the discretion so as to avoid further costs and delay. Counsel for KnitPro submitted that the matter should be remitted to the judge. In my judgment the right course is for this Court to re-exercise the discretion. It is as well placed to do so as the judge would be, and doing so will save time and money. A remittal is particularly inappropriate given that, as counsel for KnitPro himself emphasised repeatedly in the course of his submissions, this case is proceeding in IPEC and therefore proportionality is paramount.
Crafts'
case on the appeal has changed from the case it advanced before the judge in that it no longer contends that there should be no stay of any of the claims in IPEC, and instead contends that there should be a partial stay limited to
Crafts'
claim for a declaration of invalidity of the UK Chevron Mark.
"1. The discretion, which is very wide indeed, should be exercised to achieve the balance of justice between the parties having regard to all the relevant circumstances of the particular case.
2. The discretion is of the Patents Court, not of the Court of Appeal. The Court of Appeal would not be justified in interfering with a first instance decision that accords with legal principle and has been reached by taking into account all the relevant, and only the relevant, circumstances.
3. Although neither the EPC nor the 1977 Act contains express provisions relating to automatic or discretionary stay of proceedings in national courts, they provide the context and condition the exercise of the discretion.
4. It should thus be remembered that the possibility of concurrent proceedings contesting the validity of a patent granted by the EPO is inherent in the system established by the EPC. It should also be remembered that national courts exercise exclusive jurisdiction on infringement issues.
5. If there are no other factors, a stay of the national proceedings is the default option. There is no purpose in pursuing two sets of proceedings simply because the Convention allows for it.
6. It is for the party resisting the grant of the stay to show why it should not be granted. Ultimately it is a question of where the balance of justice lies.
7. One important factor affecting the exercise of the discretion is the extent to which refusal of a stay will irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court is intended to confer. Thus, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which is not repayable if the patent is subsequently revoked, this would be a weighty factor in favour of a grant of a stay. It may, however, be possible to mitigate the effect of this factor by the offer of suitable undertakings to repay.
8. The Patents Court judge is entitled to refuse a stay of the national proceedings where the evidence is that some commercial certainty would be achieved at a considerably earlier date in the case of the UK proceedings than in the EPO. It is true that it will not be possible to attain certainty everywhere until the EPO proceedings are finally resolved, but some certainty, sooner rather than later, and somewhere, such as in the UK, rather than nowhere, is, in general, preferable to continuing uncertainty everywhere.
9. It is permissible to take account of the fact that resolution of the national proceedings, whilst not finally resolving everything, may, by deciding some important issues, promote settlement.
10. An important factor affecting the discretion will be the length of time that it will take for the respective proceedings in the national court and in the EPO to reach a conclusion. This is not an independent factor, but needs to be considered in conjunction with the prejudice which any party will suffer from the delay, and lack of certainty, and what the national proceedings can achieve in terms of certainty.
11. The public interest in dispelling the uncertainty surrounding the validity of monopoly rights conferred by the grant of a patent is also a factor to be considered.
12. In weighing the balance it is material to take into account the risk of wasted costs, but this factor will normally be outweighed by commercial factors concerned with early resolution.
13. The hearing of an application for a stay is not to become a mini-trial of the various factors affecting its grant or refusal. The parties' assertions need to be examined critically, but at a relatively high level of generality."
Group
BV v Benelux Markenbureau [2003] ECR I-3793, Case C-283/01 Shield Mark BV v Kist [2003] ECR I-14313 and Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129. The applicable principles are fairly well settled by this case law, but they are not always easy to apply, as domestic decisions such as Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] Bus LR 134 demonstrate. In the present case it is not inconceivable, even if it is unlikely, that the English courts might take a different view as to the application of the principles to the view taken by the last EU instance.
Crafts
has attacked the validity of the UK Chevron Mark pursuant to section 3(1)(c), whereas it has not attacked the validity of the EU Chevron Mark on the corresponding ground. Depending on whether it is held that it is open to
Crafts
to raise this ground (as to which, compare the recent decision of Thomas Mitcheson KC sitting as the Appointed Person in BL O/0050/24 Sanctuary Personnel Ltd v Compass Comms Ltd), this could lead to the UK Chevron Mark being held invalid even if the English courts reach the same conclusions as the EU tribunals on the other grounds.
Crafts
cited Lewison LJ's observation in Broughton v Kop Football (Cayman) Ltd [2012] EWCA Civ 1743 at [51] that case management decisions "often involve an attempt to find the least worst solution where parties have diametrically opposed interests". He submitted that a limited stay was the least worst solution, and that a complete stay would be significantly worse.
Crafts
that there should at least be a limited stay. One trial would be better than two for all the obvious reasons.
Crafts'
use of the signs complained of infringed the Trade Marks (for the purposes of determining whether any threats in 2015 were justified this will be the EU Trade Marks, while for the purposes of determining
Crafts'
entitlement to relief for infringement this will be the UK Trade Marks, but the same principles will be applicable and it is difficult to conceive that the outcomes will be different) assuming, in the case of the Chevron Marks, that they are valid; whether
Crafts
can rely on the Trade Dress Rights Agreement as a defence to the allegation of infringement; whether
Crafts
has a defence under section 11(2)(b) of the 1994 Act; whether the UK Chevron Mark should be revoked for five years' non-use; and whether
Crafts
is liable for passing off.
Crafts
submitted, resolution of these issues may well be determinative of the whole dispute. A simple example is if KnitPro succeed in their claim for passing off. That would make their claims for infringement of the UK Trade Marks redundant and would for practical purposes resolve the threats claim because, even if the Chevron Marks were invalid and the claim that the Symfonie Marks have been infringed failed,
Crafts
could not claim any financial relief for being prevented from doing acts which would have been restrained as passing off and any other relief would be nugatory. Furthermore, even if resolution of these issues is not determinative of the whole dispute, it may well assist the parties to reach a settlement. Further still, even if the resolution of these issues neither is determinative nor leads to a settlement, there will be no need for a second trial if the EU Chevron Mark is ultimately held to be invalid.
Crafts
obviously does not think that that would be in its interests, and it is not hard to understand why
Crafts
takes that view. The judge was unimpressed by
Crafts'
dilatoriness in bringing its claim, and I share that view, but imposing a delay of another five years will simply compound the problems which litigating a stale claim involves. Counsel for KnitPro was unable to explain why, apart from avoiding the risk of having two trials rather than one, a five year delay would be in his clients' interests given that they are seeking relief, including injunctions, for trade mark infringement and passing off. Normally it is in the interests of parties in that position to vindicate their rights as soon as possible, as I have explained in a number of recent judgments.
Crafts.
Result
Crafts' claim for a declaration that the UK Chevron Mark is invalid pending final resolution of the validity of the EU Chevron Mark.
Mr Justice Cobb:
Lord Justice Newey: