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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Rousselon Freres Et Cie v Horwood Homewares Ltd [2008] EWHC 1660 (Ch) (18 July 2008) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2008/1660.html Cite as: [2009] Bus LR 64, [2008] RPC 31, [2008] EWHC 1660 (Ch), (2008) 31(8) IPD 31053 |
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CHANCERY DIVISION
ON APPEAL FROM THE REGISTRAR OF TRADE MARKS
Strand, London, WC2A 2LL |
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B e f o r e :
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ROUSSELON FRERES ET CIE |
Appellant |
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- and - |
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HORWOOD HOMEWARES LIMITED |
Respondent |
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Richard Arnold QC and Michael Edenborough (instructed by Messrs Mathys and Squire) for the Respondent
Further hearing date 22nd May 2008
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Crown Copyright ©
Mr Justice Warren :
Stay/suspension; jurisdiction
"When a plaintiff has a prima facie right to damages and an injunction restraining infringement, but the defendant has an outstanding application for registration which will give rise to a backdated defence if successful, what course should the court adopt? The authorities show that the court may adopt any of three alternatives: (1) the court may grant a stay of the proceedings for infringement pending the outcome of the application for registration (as in James & Sons v. Wafer Razor Co. Ltd.); (2) the court may allow the case to proceed to trial and after judgment consider the grant of a suspension of any order made pending the outcome of the application (as in the Electrolux case); or (3) grant full relief at the time, but add a proviso to any injunction to the effect that nothing therein shall prejudice the right of the applicant to proceed with his application for registration and (if successful) to exercise any rights conferred by such registration (as in Berlei (UK Ltd) v Bali Brasserie Co. Inc [1970 ]R.P.C. 469 (Megarry J.) and [1972] R.P.C. 568 (Pennycuick J.))."
"In the balancing exercise required of the interests of the parties, in the ordinary case the grave injustice of depriving a defendant of the opportunity to secure and invoke an absolute defence by a successful application for registration will be decisive: see James v. Wafer Razor Co. Ltd. (1932) 49 R.P.C. 597. But this will not be so in all cases, e.g. where the applicant cannot show that prior to the application for the stay he has done everything reasonable to speed the application: see Berlei (UK Ltd) v Bali Brasserie Co. Inc [1970] R.P.C. 469. The court may take into account the availability of an interlocutory injunction to protect the plaintiff in the interim period."
Stay/suspension; discretion
a. HH obtained the marks in 2000 knowing them to be invalid unless it established that the Sabatier mark was invalid or generic.
b. HH is guilty of gross delay in commencing its attack on the Sabatier marks until after the hearing of RF's application had been fixed (October 2006).
c. HH has failed to show the court that there is any merit in its attacks.
d. There is no material prejudice to HH in the HH Marks being invalidated as it has registration of its "Judge" and "Stellar" marks.
e. There is substantial material prejudice to RF in further delay – namely unjustified uncertainty in the market place leading to a risk of dilution of the distinctiveness of the Sabatier mark and inability to commence proceedings and recover damages for past acts of infringement committed by HH.