„(…) Mummery J:
This is a motion for judgment which raises several interesting questions
on the Civil Jurisdiction and Judgments Act 1982. The questions arise
in this way. The plaintiff moves for judgment in default of defence
in an action for infringement of trade mark No. B1297066. That is a
device mark in which the words L.A. G. appear prominently. The mark is
registered in Class 25 in respect of, inter alia, footwear. There is coupled
with the claim for infringement of the trade mark a claim for passing off.
The writ was issued on 28 January 1991. In that writ the defendant was
named as Gerald W. & Sons with an address in the Republic of Ireland.
On 8 February the writ was served by post at the defendant's registered
office. No leave to serve the writ out of the jurisdiction was sought or
obtained under R.S.C. Order 11, rule 1(1) because the plaintiff's solicitors
confirmed on the writ that the court had power under the Brussels
Convention and the Civil Jurisdiction and Judgments Act 1982 to hear and
determine the claim and that no proceedings involving the same cause of
action were pending between the parties in another Convention territory.
The Republic of Ireland is a Convention territory: see R.S.C. Order 11,
rule 1(2)(a)(i).
On 4 March 1991 the writ was amended under Order 20, rule 1 by adding
the word "Limited" to the name of the defendant. The amended writ was
served on 6 March 1991. The defendant did not acknowledge service
within the 31 day period specified in Order 11, rule 1(3)(b). A statement
of claim was served on 19 April. No defence was served. On 15 May
1991 a notice of motion dated 14 May was served seeking a final order
in default of defence in the terms of minutes of order. It appears that the
negotiations which had been proceeding between the parties with a view
to settling the whole matter have broken down.
Mr. McClure, on behalf of the defendant, made four points in opposition to
the plaintiff's claim for judgment in default of defence. The first point was
that the proceedings in their amended form have been brought against
the defendant in the wrong name. He relied on an affidavit deposing to
the fact, which is confirmed by exhibited documents, that there is no
such entity as Gerald W. & Sons Limited. There is an unlimited company
registered in Ireland called Gerald W. & Sons. As I have mentioned, the
writ was originally served on a party of that name. The plaintiff applied for
leave to amend the writ to delete the word "Limited." I grant that leave.
The plaintiff will have leave to amend the writ, the statement of claim and
the motion for judgment by deleting the word"Limited" and I dispense
with re-service of those documents. I make that order because it is quite
clear that no prejudice will be suffered by the defendant as a result of
correcting the writ to restore the name of the defendant to that which
appeared on the writ when it was first issued on 28 January.
The second point taken by Mr. McClure was that the proceedings have
not been properly served since no leave was obtained for service of the
writ out of the jurisdiction under Order 11, rule 1(1) and that the case
does not fall within Order 11, rule 1(2)(a)(i) because there are in fact
proceedings pending between the parties in the High Court in Dublin. It
is submitted that those proceedings concern the same cause of action as
the proceedings in which this motion is made. Mr. McClure submitted that
in the circumstances the court must of its own motion decline jurisdiction
in favour of the Irish court which was first seised of the litigation between
the parties. He relied on Article 21 of the Brussels Convention, which is
set out in the first Schedule to the Civil Jurisdiction and Judgments Act
1982. That Article reads as follows:
"Where proceedings involving the same cause of action and between the
same parties are brought in the courts of different Contracting States,
any court other than the court first seised shall of its own motion decline
jurisdiction in favour of that court."
It is indeed true that there are proceedings pending in Ireland between on
the one hand L.A. G. Incorporated and two others and, on the other hand,
Gerald W. & Sons for passing off by the use of the mark L.A. G. in relation
to footwear. Those proceedings were commenced on 28 May 1990 in the
High Court in Dublin and a statement of claim was served on 21 January
1991. Reference is made in the statement of claim to a registered trade
mark No.1297060 in Part A of the Register in the United Kingdom and to
the defendant enabling third parties to infringe the mark in the United
Kingdom. The plaintiff in those proceedings also pleads a goodwill and
reputation amongst the public in the goods in question, that is footwear,
both in Ireland and in the United Kingdom. An allegation of passing off is
made by reference to sales and offers for sale of the offending footwear
in Ireland by reference to the mark and to re-exporting substantial
quantities of footwear into the United Kingdom where the defendant has
offered for sale, sold and distributed it.
In those circumstances it was submitted on behalf of the defendant that
the same cause of action is relied upon by the plaintiff in both sets of the
proceedings. In the English proceedings the statement of claim relies on
a goodwill and reputation in goods bearing the device mark in the United
Kingdom and alleges passing off and infringement of trade mark by the
importation into the United Kingdom and by offers for sale and sale of
sports shoes in the United Kingdom bearing the plaintiff's mark, which
items are not of the plaintiff's manufacture. Acts of infringement are
particularised by reference to specific sales alleged to have been made
at various addresses in Northampton and in different parts of London.
The allegation of passing off relies on the same particulars of sales as are
pleaded in relation to infringement of trade mark.
I do not accept the submission that the causes of action in both sets of
proceedings are the same. They are certainly similar, but they are not
the same. A cause of action is a factual situation, the existence of which
entitles a person to obtain from the court a remedy against another
person: Letang v. Cooper [1965] 1 Q.B. 232 at 242, 243. The causes of
action are in fact different in the two sets of proceedings. There is a claim
for infringement of trade mark in the English proceedings. Although the
Irish statement of claim refers to the existence of a trade mark and to
the defendant enabling third parties to infringe that mark in the United
Kingdom, there is no allegation of infringement of the United Kingdom
trade mark by the defendant. There is no claim for relief in respect of
infringement of trade mark in the prayer to the statement of claim.
Indeed, it is difficult to see how any such claim could properly be made
in the proceedings in Ireland for infringement of the United Kingdom
trade mark. A United Kingdom trade mark is territorial in its operation.
It only has force and effect in the United Kingdom. It has no effect in
the Republic of Ireland. An action for infringement of it is local and not
transitory in nature. In other words the acts of infringement relied upon
must take place within the United Kingdom: see Dicey and Morris, The
Conflict of Laws, (11th edition), volume 2 pages 1390 and 1391 and also
Tyburn Productions Limited v. Conan Doyle[1991] Ch. 75 where it was
held that actions for infringement of intellectual property rights, such as
patents, trade marks and copyrights, are in the nature of local and not
transitory actions. There is no evidence before the court on this motion
that the law of the Republic of Ireland differs in this respect from English
law.
As to the claim for passing off made in both proceedings, different acts
are in fact relied upon. In the Irish proceedings there are allegations of
passing off by reason of, inter alia, sales and offers for sale in Ireland and
re-exporting goods from Ireland to the United Kingdom. In the English
proceedings the claim for passing off is in respect of importation into
the United Kingdom and offers for sale and sales in the United Kingdom.
Those are different acts of passing off committed in different places and
giving rise to different causes of action from the acts of passing off relied
on in the Irish proceedings. I was referred by Mr. McClure after argument
had concluded and after I had reserved judgment to a decision of the
European Court, Case 144/86Gubisch Maschinenfabrik AG v. Palumbo
[1987] E.C.R. 4861. That is a decision on the interpretation of Article
21 of the Brussels Convention. It was held that Article 21 covers a case
where a party brings an action before a court of a Contracting State for
the rescission or discharge of an international sales contract where there
is an action by the other party to enforce the same contract pending
before a court in another Contracting State. It was held that Article 21
is not restricted to cases where the two claims are entirely identical.
The real question was whether the two actions have the same "subject
matter": see paragraphs [14] and [17] of the judgment of the Court.
In that case there could be no doubt that the two actions in the two
different Contracting States did have the same subject matter, namely
the particular contract. There were different claims in respect of the same
contract. That case does not assist the defendant here since, in my view,
the subject matter of the two sets of proceedings is not the same. The
subject matter of the English proceedings is the trade mark registered
in the United Kingdom and the claimed goodwill and reputation of the
plaintiff's mark located in the United Kingdom. The allegation is that that
mark has been infringed and that goodwill and reputation have been
damaged by acts of infringement committed in the United Kingdom. The
subject matter of the Irish proceedings is the goodwill and reputation
claimed by the plaintiff for its mark in Ireland and which it alleges has
been damaged by acts of passing off committed by the defendant in
Ireland.
For these reasons I conclude that Article 21 of the Convention does not
require this court of its own motion to decline jurisdiction in favour of the
courts of the Republic of Ireland.
Mr. McClure's third point was that the court has a discretion under Article
22 of the Convention to stay the English proceedings and that it should
exercise its jurisdiction to do so. Article 22 is in these terms:
"Where related actions are brought in the courts of different Contracting
States, any court other than the court first seised may, while the actions
are pending at first instance, stay its proceedings. A court other than
the court first seised may also, on the application of one of the parties,
decline jurisdiction if the law of that court permits the consolidation
of related actions and the court first seised has jurisdiction over both
actions. For the purposes of this Article, actions are deemed to be related
where they are so closely connected that it is expedient to hear and
determine them together to avoid the risk of irreconcilable judgments
resulting from separate proceedings."
On this argument the defendant first faced a technical difficulty since
it had not served a notice of motion seeking a stay of the proceedings.
In my judgment this would normally be necessary since, unlike Articles
19, 20 and 21, there is no reference in Article 22 to the court acting of
its own motion. There should normally, therefore, be an application by
motion for any relief sought under Article 22. I am however prepared
to consider this application, and Mr. Drysdale Wilson, who appeared on
behalf of the plaintiff, addressed arguments to the court on it. It is true
that the two sets of proceedings are related in the broad sense that
they are between the same parties and concern the activities of the
defendant in two different countries in dealing in footwear which it is
alleged wrongly bears the plaintiff's mark without the plaintiff's consent.
However, in my view, it would not be possible, let alone expedient, for
the two sets of proceedings to be heard and determined together in one
country. If I stayed the English proceedings in whole under Article 22
the plaintiff would be prevented from pursuing in the English courts its
action for infringement of the United Kingdom trade mark which, for the
reasons I have mentioned above, can only properly be pursued in the
English courts. Mr. McClure argued that I could simply stay the passing
off proceedings in England. But, in my judgment, the passing off claim is
so closely related to the trade mark claim--indeed, as I have mentioned,
the same acts of infringement are relied on--that there would be little
advantage to the defendant in staying the passing off proceedings in
England. I cannot see that there would be any substantial saving of costs
and time so far as the defendant is concerned.
I therefore decline to exercise the discretion under Article 22. I would add
this, that in cases of cross-frontier claims of passing off and infringement
of trade mark it is not generally possible to confine the legal disputes
between the parties to one set of proceedings brought in one country. It is
not possible under English law to hear and determine all of the plaintiff's
complaints in English proceedings because the English court would have
no jurisdiction to determine claims for passing off against the defendant,
which is not domiciled in the United Kingdom, in respect of acts of passing
off committed in Ireland. I refer to the passage in Kerly on the Law of
Trade Marks and Trade Names, 12th edition, paragraphs 16-101 at page
428. The claims for infringement of trade mark and passing off could not
therefore be determined in English proceedings in so far as they relate
to acts in Ireland. Mr. Drysdale Wilson referred me to the example given
in illustration 2 on page 368 of Dicey and Morris, which seems entirely
in point. Illustration 2 is this: "A is the owner of a trade mark registered
in the United Kingdom. X, domiciled in the Republic of Ireland (where
the mark is not registered) uses the same mark in connection with his
business in Dublin. A commences proceedings in England for an account
of the profits X has made as a result of the passing off and trade mark
infringement. The court has no jurisdiction."
In my judgment, that is a correct statement of the legal position of
the English courts in relation to acts of passing off and trade mark use
occurring in Ireland. Equally, in my view, it would probably not be possible
for all the disputes between these two parties to be heard and determined
in the Irish courts. As I have said, the United Kingdom trade mark has no
effect outside the United Kingdom. The Irish courts cannot therefore hear
and determine an action for infringement of that trade mark; and if Irish
law is the same as English law, and I have no reason to believe on this
application that it is different, it would not be possible in the Irish courts
to hear and determine allegations of passing off alleged to be taking place
or to have taken place in the United Kingdom.
I come finally to what is to happen to this notice of motion. I have held
the court is not required to stay these proceedings and in so far as
the court has a discretion to do so I decline to stay them. Mr. McClure
submitted that if he failed on those points, which he has, he would wish
to have time in which to serve a defence. He asked for 28 days in which
to do so. Mr. Drysdale Wilson submitted that 21 days would be sufficient
in the circumstances. I agree with Mr. Drysdale Wilson on this point. The
defendant has had ample time to consider what defence it wishes to put
in to this claim. It is clear from an affidavit which was sworn on behalf of
the defendant by Mr. Roger Anthony Pitts Tucker that instructions have
been obtained from the client as to the contentions it wishes to advance
in defence of the claim.
So I propose to make no order on this motion save that the defendant is
to have 21 days in which to serve a defence.
I will now hear submissions from counsel about costs and any other
related matters on which directions are required.
[Discussion followed concerning costs]
Mummery J.:
I think that the normal order for costs is the appropriate one, that is that
the defendant be ordered to pay the plaintiff's costs of this motion in any
event.
No order on motion. (…)“