Blunting the edge of a declaration of invalidity

Last Friday Mr Justice Warren, sitting in the Chancery Division (England and Wales), gave a ruling in Rousselon Freres Et Cie v Horwood Homewares Ltd, [2008] EWHC 1660 (Ch). This was a follow-on from an earlier hearing (noted here by the IPKat) in which the same judge held that kitchen knife-maker Rousselon was entitled to invalidate Horwood's trade marks for knifes in Class 8: both marks contained the striking name SABATIER and there was a likelihood of confusion since the dissimilarities between the parties' respective marks were not sufficient to undo the dominant effect of their shared name.

After Warren J held that Rousselon was entitled to a declaration that Horwood's trade marks were invalid, Horwood sought suspension of that declaration pending the outcome of its application to invalidate or revoke Rousselon's own registered marks. The judge was asked to deal with two issues: (i) did the court have jurisdiction to suspend the making of the declaration and (ii) if so, should that discretion be exercised?

Warren J's answers were "yes" and "yes". He explained that the court had jurisdiction to suspend the making of a declaration of the invalidity of a trade mark not only where an appeal against that decision was pending but in other circumstances too, so long as its jurisdiction was exercised in a manner that was appropriate to a stay of execution and which did not cast aspersions on the validity of the original judgment. In global terms, a declaration of invalidity had implications that far exceeded its effect on the parties to the litigation. This was because, since a registered trade mark was a property right enforceable against the world, the effect of a declaration of invalidity was the irreversible consequence that everyone else in the world could rely on it. It was not disputed that, pending Orders for revocation and declarations of invalidity were often suspended pending an appeal, so the court clearly had jurisdiction to suspend its order here -- and there was no reason to doubt that the same jurisdiction was available in other circumstances. On the facts, jurisdiction to suspend the declaration was appropriate here.

The IPKat, having read the original judgment and counsel's submissions arguing against the stay (see paragraph 18 of last week's judgment), made a little wager with himself that Rousselon would emerge victorious -- which just goes to show how important it is to hear both sides of an argument before reaching one's conclusions. Merpel says, once again it seems a shame that a dispute such as this has had to go through one battle before the Hearing Office and two High Court hearings in order to reach the stage at which it is still necessary to determine whether the trade marks of the applicant for a declaration of invalidity were themselves invalid. Can it be that, when a dispute first arises before the Registry, it is more difficult to impose a case management structure on it than is the case for disputes which are initiated at High Court level?

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Blunting the edge of a declaration of invalidity Blunting the edge of a declaration of invalidity Reviewed by Jeremy on Wednesday, July 23, 2008 Rating: 5

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