Marques 2013: enforcing rights and the jurisdiction problem


Lawyers speaking at the Marques annual conference in Monte Carlo discussed the difficulties of enforcing trademarks and designs in different jurisdictions.

Opening the session, entitled Enforcement - one script, different shows, Sarah Bailey, partner at Simmons & Simmons LLP, said predictability in the law is key to enforcement but that the Apple v Samsung design disputes "have made us question" predictability.

Bailey passed over to Miquel Montañá, partner at law firm Clifford Chance, who looked at some of the European jurisdictions in which Apple and Samsung have been fighting and the results in those cases.

For example, in the Netherlands, Apple had a request for an injunction rejected, but there have been conflicting decisions in other countries such as Germany.

"The different conclusions are driven by different facts," Montañá said.

He went on to discuss whether infringement proceedings brought by one rights owner against a trademark or design should be stayed if someone has already filed an invalidity action against that right at the Office for Harmonization in the Internal Market (OHIM).

Noting the difficulties of arriving at an answer, Montañá showed that in Spanish, for example, parts of the relevant trademark and design legislation say someone "may" stay proceedings while other parts say "shall".

In the UK, he added, it appears that there is a strong presumption of granting a stay in these situations but the reasons for doing so must "relate to facts specific to the case".

Montañá handed over to Simon Malynicz, a barrister at Three New Square Intellectual Property in London, who focused on trademark infringement online.

He gave the example of a potential trademark dispute between two companies - one in the US (with a .com domain name), one in the UK (with a address) - both branded 'Cute'. A key question, he said, was where the companies could be sued.

There is "nothing of any assistance in the Community Trademark legislation", he said, while UK courts have rejected the idea "that a mark amounts to an octopus tentacle - and is available to everyone".

"Rather, the mark was akin to a telescope which allows you to view far off websites."

The Court of Justice of the European Union (CJEU) has rejected the 'tentacle' argument, he said, noting that "you have to see if the website is directed at the jurisdiction in question".

For example, companies might assess whether a site (using a trademark name) has foreign customers or uses international dialing codes when deciding where to sue it. If a Cuban site is written in German, Malynicz said, it is most likely directed to the German market - as the language is not widely spoken outside Germany - and it could be sued in Germany.

He ended by discussing the effects of the IP Translator case, in which the CJEU ruled that there must be a more clear and consistent approach to trademark registrations.

Malynicz said: "It makes substantive law different across the EU. That is a problem. If a mark is not clear and precise, how do you enforce it? It is crying out for forum shopping.

"We have issues about divergent approaches to the clarity of marks. These haven't been resolved ... This uncertainty will continue."

This article was first published on 18 September 2013 in World IP Review

Marques 2013, OHIM, enforcing IP rights, trademarks, designs

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