From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Sunday, 11 October 2015

Invalidating an absent litigant's trade marks: yes, of course it can be done

Earlier today this Kat posted a guest item by Katfriend Aaron Wood on the ruling of Mrs Justice Rose in Roederer v J Garcia Carrion S.A. & Others [2015] EWHC 2760 (Ch), in a much-publicised trade mark infringement action brought by Roederer, the owners of the CRISTAL trade mark for wine, used when marketing their Champagne, against JGC, the makers and sellers under the CRISTALINO JAUME SERRA trade mark of a non-Champagne wine, cava,

While Aaron focused on the issue of infringement, there was another issue of note, albeit one that was tucked in at the very end of the learned judge's lengthy judgment.  Roederer also sought an order invalidating the Community and United Kingdom trade marks belonging to JGC.  Given that the use of JGC's marks had already been held to infringe, this might have been assumed that the making of such an order was a no-brainer -- all the more so in that JGC did not enter a defence or take any part in these proceedings at all. However, in the wonderful world of intellectual property things are never quite as simple as one might imagine. As Rose J explained, at [107] to [109]:
"At the start of the trial I expressed some concern as to whether it was appropriate for me to consider striking down the JGC marks in this case without being satisfied that JGC fully realised that the proceedings in which they had decided to play no part might result not only in a finding of infringement being made against them but also in the invalidation of their CRISTALINO JAUME SERRA marks. However, Mr Malynicz's submissions have persuaded me that it is appropriate to deal with this aspect of the case. JGC is a very substantial company that is very familiar with trade mark law and proceedings. They have been kept fully informed about all the orders made in the case since they stopped participating. The court orders make clear that although the passages in the Counterclaim challenging the validity of the Roederer marks have been struck out, the passages in the Reply and Defence to Counterclaim attacking the JGC marks remain. I accept that JGC should not be in a stronger position before the court because of their refusal to engage in the proceedings and that if I decline to deal with the matter now, it would be open to Roederer to bring separate infringement proceedings, thereby leading to a duplication of effort. Mr Malynicz also reminded me that any decision I make in these proceedings as regards the CTM has effect only in relation to its validity in the UK, the CTM can then be converted into a series of national marks, excluding the UK.

If the cava had been more diluted and less
tarnished, Miffy might have been less confused
The invalidity claim relies solely on confusion, not on dilution or blurring. In the light of my findings on the likelihood of confusion I consider that the invalidity claim should also be upheld. Although the JGC marks are for CRISTALINO JAUME SERRA and not for CRISTALINO by itself, the use that they have in fact made of their mark is a fair notional use of the composite and it is likely to give rise to confusion. I note here that I am coming to a different view from that taken by Mr Bryant, the Principal Hearing Officer at the Trade Marks Tribunal at the Intellectual Property Office on 2 June 2009 when he rejected Roederer's opposition to the registration of JGC's UK mark. However, it is clear from Special Effects v L'Oréal SA [2007] EWCA Civ 1, [noted by the IPKat here] that this decision is not binding on me. I have before me evidence that he did not have, namely the use of the mark in the UK with the first word much more dominant than the other two words also present on the label of the Reserva and Brut versions of the cava.

I therefore uphold the challenge to the invalidity of JGC's UK mark and CTM. ..."
So the moral of the story is clear, says Merpel: you shouldn't be in a stronger position by opting out of the litigation than if you had remained in it.  But might one have ever believed that this was not the case?  Readers might be able to offer some examples ...

3 comments:

Sally Cooper said...

NOTE TO SELF : Check what action was taken following from this Judgement to end period of registration : particular thoughts being (a) whether action taken at all and (b) if it was - what was the end-date of registration ?

Anonymous said...

Can someone explain this please: "Mr Malynicz also reminded me that any decision I make in these proceedings as regards the CTM has effect only in relation to its validity in the UK, the CTM can then be converted into a series of national marks, excluding the UK".

What's the legal basis for this in the CTM Regulation? Doesn't article 55 CTMR only permit the complete invalidity of the whole CTM? I don't see why an invalid CTM should be automatically converted into national marks.

Darren Smyth said...

I think that what you are looking for is Art 112 to 114 of the CTM Regulation - the Conversion procedure.

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