Trademark protection is an eternal topic, as well as international TM litigation. All right, all right, when a TM dispute is resolved within the framework of common law. Then all teams play according to the same rules. But what if one of the "players" is out of the general field of play?
The High Court refused to resolve the dispute over the violation of the TM rights of a company registered outside the EU. In this post, we will look at IP dispute resolution where the parties are located outside of common law countries.
In a recent TM dispute case, the European Court of Justice established a number of non-exhaustive criteria for determining whether a company's activities fall under the rules of a particular EU member state if the company is located outside the EU. Among them:
- The right to settle a TM dispute in relation to defendants who are outside the EU is governed by common law;
- There are strong arguments in favor of the claim being governed by the laws of one of the EU jurisdictions;
- The UK is definitely the right place to settle a TM dispute.
TM dispute resolution in England
Company E is the owner of brands registered in England and the EU.
E filed a lawsuit against a Latin American company F, which operated domestic flights. Company E, claimed that F came up with its name in order to take advantage of the brand E.
Company E has filed an application against Company F, which is located in Latin America (i.e. outside the European Union), arguing that:
- Company F's website is available in the UK and EU;
- Company F carries out advertising activities to consumers in the UK and EU;
- F aircraft were manufactured by the French aircraft manufacturer, Company N, and were publicly delivered to France and Spain;
- The press release was presented by Company A at its UK Air Show where Company N announced its agreement to supply aircraft from Company F.
Company E has obtained a TM settlement with Companies F and A outside the jurisdiction. Company E applied to join N's case as a third respondent. But soon new decisions were made.
The court's considerations
The court granted F's request and rejected E's request that N be involved in resolving the TM dispute.
Trademark rights are territorial. The Court had to consider whether the website was targeted by the United Kingdom or the EU. This raises a serious question. While many of the elements listed by the company as evidence that the activity is targeted at a specific state are missing, this list is not exhaustive and the activity is likely to be of interest to visitors in Latin America.
Likewise, there was a serious problem that had to be addressed in relation to direct marketing infringement. The use of the F mark in the press release is said to establish a direct reference to the company. Flying a plane in France and Spain with the "F" logo in front of the public is likely to violate the rights to EU TMs.
Company E did not provide complete and frank information when filing an IP infringement claim. It did not explain that its claim in England was against an airline offering only domestic flights.
Instead, E presented the case in such a way that the Latin American airline offers services in the United Kingdom and the EU, without clearly indicating that F's services were indeed only provided in Latin American countries.
This decision is interesting when considering the requirements, in particular, how the court will make decisions in TM disputes in relation to companies located outside the EU. Consulting an international lawyer regarding IP dispute resolution will help you avoid mistakes. You can sign up for advice on the resolution of disputes in the field of intellectual property in IQ Decision UK.