Jacob J: handed down the following judgment. This is an application by
the defendant, D.C. G.m.b.H., for an order setting aside the writ on the
grounds that this court does not have jurisdiction to hear and determine
the claim made against it under the provisions of the Civil Jurisdiction and
Judgments Act 1982. Alternatively D.C. seeks an order staying this action
or declining jurisdiction on the grounds that the Landgericht München I is
first seised of a related action in which D.C. is plaintiff and a corporation
called N. G.m.b.H. is defendant. Further or alternatively D.C. seeks an
order striking out the claim under the provisions of R.S.C., Ord. 18, r. 19
or the inherent jurisdiction of the court.
The claim
The plaintiffs allege that D.C. is committing the English tort of passing
off. The relief sought is in relation to the activities of D.C. in and from
Germany said to lead to that tort being committed. It is said that the
plaintiffs have a goodwill in England and Wales, that D.C. is making a
misrepresentation within the jurisdiction and that that misrepresentation
has caused and will cause the plaintiffs damage within the jurisdiction –
the trinity of elements constituting passing off.
It is convenient to consider the strength of this claim first, for if D.C.
can show that the claim has no prospect of success it should be struck
out on purely English law principles. Further, it is common ground that
the strength of the claim is relevant to jurisdiction under the relevant
provisions of the Convention on Jurisdiction and the Enforcement of
Judgments in Civil and Commercial Matters ("the Brussels Convention"),
which apply by virtue of the Civil Jurisdiction and Judgments Act 1982.
In particular it is common ground that a higher standard than that for a
strike out is required: it is for the plaintiff to satisfy the court that there
is "a serious question which calls for a trial for its proper determination:"
per Dillon L.J. in M lnlycke A.B. v. Procter & Gamble Ltd. [1992] 1 W.L.R.
1112, 1121, quoting from Nicholls L.J. in Tesam Distribution Ltd. v. Schuh
Mode Team G.m.b.H. [1990] I.L.Pr. 149, 158, 160. Clearly a foreign, even
a European Union, defendant should not be brought before our courts
unless there is a serious question to be tried.
I turn to the first element of the trinity. The first plaintiff, M. Corporation,
is incorporated in Delaware. The second plaintiff, M. Ltd., is its English
subsidiary. The second plaintiff has, since 1994, been involved in
the organisation of three trade shows in the United Kingdom. These
were called "IW and Document Delivery World" (1994) and "IW
International" (1995-96). It is said that these trade shows were widely
advertised and attended. The trade shows were organised in conjunction
with a licensee company. It is said that it was specifically agreed that all
goodwill in the name "IW" should vest in the first plaintiff, which I will
henceforth call "M.."
M. has, since 1993, published in the United States a magazine called
"IW.." This is claimed to have some circulation within the U.K., but this
must be essentially of the "spillover" variety. In the autumn of 1996 an
English version of the magazine was launched under the same name. It
is published by B. Publications but claims association, correctly, with the
U.S. magazine by saying:
"IW is already the most popular Internet magazine in the U.S. Now IW is
to be published in the U.K. by the people who bring you PC."
The first edition was given away free with "PC" and there was no dispute
but that that magazine has a substantial U.K. circulation. It is claimed
that B. publishes the English edition under licence from M. and that it is
specifically agreed by B. that the goodwill in the name "IW" should belong
to M..
Finally it is claimed that M. owns two web sites having the addresses
"http://www.IW.com" and "http://www.IW2.com." It is said that anyone
"visiting" these sites would see prominent use of the name "IW" and
promotion of the plaintiff's trade shows and magazines. Not much
information is given about these sites – for instance their date of
establishment and the number of English visitors – and I do not place
reliance on them.
The upshot of these activities is said to be that the plaintiffs own an
"extensive goodwill" in England. I certainly think that the plaintiffs have
established that there is a "serious question" that they do own such a
goodwill. The most prominent activity has been the trade shows here. I
do not see how they can have done other than create goodwill. It was
suggested that the second plaintiffs may not own any part of that goodwill
– by virtue of the provisions of the licence – but I do not think that
matters for present purposes: one or other of the plaintiffs or both are
entitled to it. It is a goodwill which at least extends to the holding of trade
shows.
The other two activities said to contribute to goodwill are much less
significant for several reasons. The spillover from the U.S. magazine and
the web site names is, on the present evidence, too shadowy. And the
U.K. magazine is too late to be relevant to the question of whether the
plaintiffs had a U.K. goodwill at the relevant time, namely July 1996,
when D.C. started the activities complained of: see J. C. Penney Co. Inc.
v. Penneys Ltd. [1975] F.S.R. 367, 371 372.
By way of attack on the claimed goodwill D.C. suggests that "IW" is
descriptive, so descriptive that goodwill cannot exist in the name. This
sits ill with its contention that in Germany it has a valid registered mark
consisting of that name. Moreover, it uses the name as a trade mark,
complete with the symbol R(R) on brochures sent to this country. True it
is that in Germany the name is in a foreign language, but that contention
is of little weight having regard to the fact that most, if not all, of those
likely to be interested will speak English because English is the main
language of the Internet. Moreover, a German would not have to know
much English to understand the two words: "I." is an international word
and "w." is far from an obscure English word.
Miss Jones, for D.C., contended that the words should be regarded in
the same way as the Court of Appeal regarded the words "Gold A.M."
in County Sound Plc. v. Ocean Sound Ltd. [1991] F.S.R. 367, 373. I do
not think that case assists. There the words were used by different radio
stations for programmes. The plaintiffs' use was very short and the court
held that it was not proved it was recognised as an indication of source.
I think here the words are to some degree descriptive, though not wholly
so. "IW" is not so descriptive that people familiar with past trade shows
under that name would not expect further "IW" trade shows to be run by
the same people who used that name in the past. On the contrary I think,
prima facie, they would.
The next element of the trinity is misrepresentation. D.C. has organised
its own trade shows, also calling them "IW." The shows have been in
Düsseldorf (26-28 November 1996) and Vienna (11-13 February 1997).
To promote these shows D.C., based in Germany, has prepared an English
language letter and brochure and sent them out to prospective visitors
and exhibitors. I have no information about other language promotional
material, but I expect there is at least a German brochure. It is clear from
what D.C. has done that it does not regard its shows as purely national
affairs – it seeks business internationally, including from here. D.C. has
also established a German web site under the domain name "http://
www.I-W.de."
So far as this country is concerned, D.C. specifically puts onto its
database the names and addresses of people and companies who
appeared in the plaintiffs' "IW" trade show catalogue in London. D.C.
openly so admitted in a fax of 12 August 1996. Actually the fax is a little
ambiguous (it speaks of the "congress visitors"). I was told, and there
seems to be no dispute, that the trade show brochure contained a list of
exhibitors and those visitors who had booked their tickets in advance.
So D.C. has deliberately targeted those particularly interested in the
plaintiffs' shows. Moreover D.C. has asked the Overseas Department of
the Department of Trade and Industry to promote its "IW" exhibitions.
D.C. is clearly drumming up business from the U.K.
I think there is certainly a serious question to be tried as to whether
what D.C. has been doing would mislead the interested public here. It
is true that D.C. uses the name "dc conferences" in small type. I cannot
see how that would help those who spotted that use. The show here was
organised with a local company and I rather think that quite a number
of recipients of the defendant's material would expect the two shows
advertised to be connected with the plaintiffs by much the same sort
of arrangement. True it is that evidence of misrepresentation at this
stage does not include evidence from deceived or confused persons (I
disregard the thin evidence that the second plaintiff's managing director
has received calls from confused customers as too vague). But I do not
think that matters. After all the names are the same and I am entitled to
form my own view of the matter.
What about the third element of the trinity, damage? Miss Jones says
none has been proved. Now in some cases one does indeed need separate
proof of damage. This is particularly so, for example, if the fields of
activity of the parties are wildly different: e.g. Stringfellow v. McCain
Foods (G.B.) Ltd. [1984] R.P.C. 501, nightclub and chips. But in other
cases the court is entitled to infer damage, including particularly damage
by way of dilution of the plaintiff's goodwill. Here I think the natural
inference is that M.'s goodwill in England will be damaged by the use
of the same name by D.C. To a significant extent M.'s reputation in this
country is in the hands of D.C. – people here will think there is a trading
connection between the German and Austrian fairs and the M. fairs.
It is to be noted that all the activities of D.C. take place in Germany
and Austria – none take place within the territorial jurisdiction of this
court. But I cannot think that matters so far as the English law of passing
off is concerned. To do acts here which lead to damage of goodwill
by misleading the public here is plainly passing off. To do those same
acts from abroad will not avoid liability. Whether the court can assume
jurisdiction – in the sense of becoming seised of an action – over a
defendant abroad is another matter. That depends upon the extent to
which the court has the power to make a person abroad party to an
action. The Brussels Convention regulates that power for members of the
Convention.
I therefore think that there is a serious question to be tried. That disposes
of the strike-out application and gets the plaintiffs over the first hurdle to
justify service out of the jurisdiction. I now turn to the remaining points,
which concern the Brussels Convention.
Is service out of the jurisdiction justified under the Convention?
The convention
Article 2 of the Convention sets out the basic rule: "Subject to the
provisions of this Convention, persons domiciled in a contracting state
shall, whatever their nationality, be sued in the courts of that state."
In footballing terms the plaintiff must "play away." Section 2 of the
Convention provides for "Special Jurisdiction," under which a plaintiff is
given a choice of other forums in the circumstances defined. The relevant
provision here is article 5(3):
"A person domiciled in a contracting state may, in another contracting
state, be sued... 3. In matters relating to tort, delict or quasi-delict, in the
courts for the place where the harmful event occurred."
Section 8 of the Convention deals with co-pending proceedings under the
general title "Lis pendens – related actions." It provides:
"Article 21. 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 stay its proceedings until such time as the jurisdiction of the
court first seised is established. Where the jurisdiction of the court first
seised is established, any court other than the court first seised shall
decline jurisdiction in favour of that court.
"Article 22. Where related proceedings are brought in the courts of
different contracting states, any court other that 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."
The contentions
The plaintiffs say that by virtue of article 5(3) they are entitled to sue
the defendant in England for the English tort of passing off. D.C. says it
should be sued in Germany for a variety of reasons. It contends that: (1)
the circumstances do not fall within article 5(3); alternatively, (2) article
21 is applicable and there should be a mandatory stay of this action;
alternatively (3) article 22 is applicable, so that the court has a discretion
to order a stay and should exercise that discretion.
Is the case within article 5(3)?
It is settled, and self-evident from the Convention, that where article
5(3) applies the plaintiff is given an option to sue either in the forum of
the defendant's domicile or forum (or forums) of the place (or places)
where the harmful event occurred. For the present I will assume that
article 2 would permit an action in Germany in respect of the passing off
in England (though as to this see below). That does not prevent an action
in England if the "harmful event" occurs here.
It is well settled that a plaintiff cannot rely upon mere indirect or
consequential loss as a "harmful event:" see Dumez France v. Hessische
Landesbank (Helaba) (Case C-220/88) [1990] E.C.R. I-49. In that case
the French parent company tried to sue in France in respect of losses
suffered by its German subsidiaries in Germany. The court said, at p. 79,
para. 14:
"the damage alleged is no more than the indirect consequence of the
harm initially suffered by other legal persons who were the direct victims
of damage which occurred at a place different from that where the
indirect victim subsequently suffered harm."
Not surprisingly France was held not to be the place where the harmful
event occurred. The court had already held in Handelskwekerij G. J.
Bier B.V. v. Mines de Potasse d'Alsace S.A. (Case 21/76) [1978] Q.B.
708 that the "place where the damage occurred" may be interpreted as
referring to the place where the indirect victims of the damage ascertain
the repercussions on their own assets. That case was concerned with
discharge of a saline waste into the Rhine in France which affected crops
in the Netherlands. There the court held that the plaintiffs could sue in
the Netherlands because that was the place where the damage occurred,
even though the wrongful act of discharge was in France. In the Dumez
France case [1990] E.C.R. I-49 the court went on to explain the position
in more detail. It said, at pp. 79-80:
"17. It is only by way of exception to the general rule whereby jurisdiction
is attributed to the courts of the state of the defendant's domicile that
Title II, Section 2 attributes special jurisdiction in certain cases, including
the case envisaged by article 5(3) of the Convention. As the court has
already held (Mines de Potasse[1978] Q.B. 708, 729, paras. 10 and 11)
those cases of special jurisdiction, the choice of which is a matter for the
plaintiff, are based on the existence of a particularly close connecting
factor between the dispute and the courts other than those of the state of
the defendant's domicile, which justifies the attribution of jurisdiction to
those courtsfor reasons relating to the sound administration of justice and
the efficacious conduct of proceedings.
"18. In order to meet that objective, which is of fundamental importance
in a convention which has essentially to promote the recognition and
enforcement of judgments in states other than those in which they
were delivered, it is necessary to avoid the multiplication of courts of
competent jurisdiction which would heighten the risk of irreconcilable
decisions, this being the reason for which recognition or an order for
enforcement is withheld by virtue of article 27(3) of the Convention.
"19. Furthermore, that objective militates against any interpretation of
the Conventions which, otherwise than in the cases expressly provided
for, might lead to recognition of the jurisdiction of the courts of the
plaintiff's domicile, and would enable the plaintiff to determine the
competent court by his choice of domicile.
"20. It follows from the foregoing considerations that although, by virtue
of a previous judgment of the court (in Mines de Potasse d'Alsace),
the expression 'place where the harmful event occurred'... may refer
to the place where the damage occurred, the latter concept can be
understood only as indicating the place where the event giving rise to the
damage, and entailing tortious, delictual or quasi-delictual liability, directly
produced its harmful effects upon the person who is the immediate victim
of that event.
"21. Moreover, whilst the place where the initial damage manifested itself
is usually closely related to the other components of the liability, in most
cases the domicile of the indirect victim is not so related."
D.C. asserts that in this case Germany is the place of the harmful event.
I do not accept that submission. So far as the English tort of passing off
is concerned, the harm is to the goodwill in England, and is the effect on
the reputation in England. That is a direct effect on the plaintiffs' claimed
English property.
I am confirmed in that view by the last-quoted paragraph from the
Dumez France case [1990] E.C.R. I-49. All the components of liability
of the tort take place in England. A trial would require proof of goodwill,
misrepresentation and damage in England. It would not matter whether
or not what D.C. was doing in Germany was, so far as German law and
facts were concerned, lawful or not.
I find further support for the proposition that in relation to the English
law claim it is in England that the harmful event is occurring from the
decision of Knox J. in Modus Vivendi Ltd. v. British Products Sanmex
Co. Ltd. [1996] F.S.R. 790. Knox J. had to consider the Convention (as
adapted in respects immaterial in the present case by Schedule 4 to the
Act of 1982) in the context of a choice between England and Scotland
as the appropriate forum. The defendants were in Scotland, where they
filled butane containers. These were transported through England to Hong
Kong and China. The artwork was deceptive in the ultimate markets.
An argument that the harmful event occurred in England failed. Knox
J. said that the place where the damage occurred was the place where
thedeception occurred, namely Hong Kong and China. Knox J. said, at p.
802:
"If one supposes that the passing off in the present case was effected in a
Convention country, say, for example, France... there would in my view be
seen to be close connecting factors with France where, to put it neutrally,
the illicit incursion into the plaintiff's goodwill... occurred."
In this case the deception alleged is in England. On that reasoning there
are close connecting factors with England.
D.C. puts its case in an alternative way. Assume, it says, that the German
court is prepared to consider the English passing off claim. Then there
would be a risk of inconsistent judgments, the the very thing that
the Dumez France case [1990] E.C.R. I-49 says it is an object of the
Convention to avoid. There are, I think, several answers to that.
First, avoiding a possibility of conflict is not a matter with which article
5(3), as such, is concerned. All one derives from the desire to avoid
conflicting decisions in relation to article 5(3) is, as the court said in the
Dumez France case and in other cases, that the exceptions to the general
principle should be recognised as such and confined accordingly. It is
articles 21 and 22 which are directly concerned with the possibility of
conflict.
Second, it is clear that each of the derogations from article 2 gives
the plaintiff the possibility of an alternative forum from that of the
defendant's domicile. If the argument were right, then there would never
be alternatives. Putting the point another way, implicit in the argument is
that there is only one possible forum. Once that is made explicit one can
see it is fallacious. The fallacy is even more apparent when one considers
the important case of Shevill v. Presse Alliance S.A.(Case C-68/93)
[1995] 2 A.C. 18. The plaintiffs, an individual and some companies,
sued in England in respect of an alleged libel in daily newspaper "France
Soir." "France Soir" had a limited circulation here and in several other
European countries, but its main distribution was in France. The court
accepted that there was a possible multiplicity of jurisdictions. The "place
where the harmful event occurred" was any place where damage was
directly caused, namely the place where the publisher was established,
i.e. France, and the place where the publication was distributed, i.e.
England, and possibly other countries too. If the action was brought in
a state where the publisher was established, the courts of that state
had jurisdiction to award damages in respect of all the harm caused
by the publication. If the action was brought "locally" the courts of the
state concerned had jurisdiction to award damages for the publication
in that state. The case is of great importance if it also governs parallel
infringements of intellectual property rights and governs the grant of
injunctions as well as damages. It would mean that a plaintiff could
not forum-shop around Europe for a Europe-wide injunction. He could
only seek such an injunction in the state of the source of the allegedly
infringing goods or piratical activity. I say no more here. For present
purposes Shevill's case is as clear a case as one could find that article
5(3) does not exclude the possibility of action in several states.
I think the plaintiffs are within article 5(3).
Article 21
This requires that there be proceedings for the same cause of action and
between the same parties. D.C. says that is the position here. Prior to the
present action, in Germany D.C. commenced trade mark infringement
proceedings against M.'s German licensees. It is submitted that those
licensees should be regarded as the "same party" as M. itself. I do not
see why. I can understand that a wholly-owned subsidiary might be so
regarded (cf. Berkeley Administration Inc. v. McClelland [1995] I.L.Pr.
201, 211, where Dillon L.J. said, in the context of article 21, that it was
"wholly unreal" to separate a wholly-owned subsidiary from its parent).
But a mere licensee, a wholly different enterprise which happens to
be working with the plaintiff, is simply not the same party. What if the
licensee decided not to contest the proceedings? Or decided to fight them
in some way contrary to the plaintiff's interest, e.g. attacking the trade
mark on the grounds of descriptiveness when the plaintiff contends that
it is distinctive but means it? There is nothing M. could do to stop this –
because the licensee is not the same party.
Further I think that the causes of action are different. The cause of action
in Germany is alleged infringement of the German registration. Hardly
any of the facts relevant to the present action are relevant there: not
English goodwill, not English reputation and not damage to goodwill or
trade in or from England. And many facts, and all the law, which will be
relevant to the German dispute are not relevant here. The situation is
not as described by the Court of Justice as necessary for article 21 to
apply: "For the purposes of article 21 of the Convention, the 'cause of
action' comprises the facts and the rule of law relied on as the basis of the
action:" see The Maciej Rataj (Case C-406/92) [1995] All E.R.(E.C.) 229,
254, para. 39.
I reject the article 21 argument.
Article 22
There are a number of points here. Before the discretion to order a stay
or decline jurisdiction arises, the case must come within the terms of
the article. Here there are three points in issue. (1) Is the German court
seised of a "related action?" (2) If so, is there a German action pending
"at first instance?" (3) Can the German court assume jurisdiction in
respect of passing off in England?
I must first set out in more detail what proceedings are on foot in
Germany. I have already said that there are infringement proceedings by
D.C. against N, M.'s licensees. D.C. sought provisional relief preventing
N. from advertising "IW Berlin 1997" in respect of trade shows. Relief was
refused and an appeal is pending. M. here has now – on 30 January 1997
– started its own German proceedings seeking an order to prevent D.C.
from using the marks "Iw" and "IW" and for cancellation of the German
registered trade mark. It was suggested that those proceedings included
a claim to prevent passing off in England. I have been shown a rough
translation of the pleading, prepared by D.C.'s solicitors, and am not
convinced that that is so. In addition (although this is irrelevant save
possibly on the question of discretion) M. has started proceedings in the
U.S. to prevent use of "IW" in the U.S.
(1) Related action?
So the only proceeding prior to the present claim is the infringement
action in Germany. Article 22 effectively defines the term "related actions"
as those in respect of which it is expedient to hear them together to
avoid the risk of irreconcilable judgments. I fail to see how there is
such a risk. It may be – if the German registration is valid – and there
is no defence of prior use made out, that D.C. could win in Germany.
I do not know. But whether it does or not could not affect the English
proceedings, concerned as they are with the goodwill here. There is no
risk of conflicting decisions, that being the relevant test under The Maciej
Rataj (Case C-406/92) [1995] All E.R.(E.C.) 229, 256, para. 58.
Miss Jones submits that this is really all about an international dispute.
That is true in a sense. But that does not mean that there cannot be
different results in different countries. Much depends on the local goodwill
and the extent to which the mark has been used locally. Indeed the
argument is inconsistent with the proposition advanced earlier that the
mark may be wholly descriptive in England, but not in Germany.
(2) Action at first instance?
The evidence as to the nature of the German proceedings is as follows.
The application for an injunction in Germany does not take place
within the context of a "main" action, i.e. a legal proceeding for a final
determination on the merits. It takes place outside of such proceedings.
If the plaintiff obtains an injunction, then the defendant can, but does
not have to, require the plaintiff to start a main action. If no injunction
is obtained, that is an end of the matter. The procedure sounds quite
sensible and may be worth considering for adoption here as a way of
obtaining an "early view" on the merits of some cases. M. says that
accordingly there are no first instance proceedings on foot. D.C. says that
the possibility of full proceedings is a live issue in Germany, though it
would be premature to take any further steps towards a main hearing.
I decline to come to any conclusion on this point. It seems to me perfectly
arguable that the German procedure is in substance an interim measure
in an action. It would be odd if what is procedurally somewhat different
but in substance not significantly different between Germany and here
could really matter. Further, I am aware that the juridical nature of the
Dutch "kort geding" – which, as I understand it, is not all that different
from the German procedure as described in the evidence before me – is
likely to be examined by the Court of Justice in the near future.
(3) English passing off triable in Germany?
This takes the extreme form of an attack on "related proceedings." It is
also directly relevant to the question of whether the English courtshould
exercise its discretion under the second paragraph of article 22 to decline
jurisdiction or, under the first paragraph, to stay the action. M. says that,
although by article 2 the German court is given jurisdiction over an action
against D.C. because D.C. is of German domicile, article 2 goes no further.
It does not make passing off in England actionable in Germany. M.'s
expert on German law asserts that:
"The plaintiffs cannot rely in Germany on their rights generated in the
U.K. and similarly the defendant cannot rely on the right granted by
their German trade mark registration outside Germany. Accordingly
the plaintiffs would be unable to bring these proceedings in Germany
against the defendant because they cannot base their claim in Germany
on U.K. trade mark rights acquired by use. The German courts are neither
permitted nor competent to hear the action."
D.C.'s expert on German law does not answer this as a matter of German
national law. He points to the Convention. He says that this not only
provides for the appropriate forums, but, as a consequence, makes
matters assigned to a particular forum justiciable there. Unless this is
so, he argues, there would be no need for article 16, and other articles,
providing for exclusive jurisdiction in limited and defined classes of case.
Now all this is a matter of E.U. law. Unlike foreign law, which is treated
by our law as a question of fact, E.U. law is part of our law. So this
court needs no evidence and is competent and under a duty, where it is
necessary to do so, to decide the point itself.
The point is of considerable importance. If D.C.'s contention is correct, the
Convention provides that a defendant can be sued in his state of domicile
for a tort committed in another member state according to the law of
that member state. The domestic law of the state of domicile would be
irrelevant. In other words, article 2 is concerned with more than questions
of proper service: it requires the courts of one state to apply the law of
another state in relation to events in that other state. If right, then it
would seem that the recent abolition of the double actionability rule of
English law was irrelevant so far as Convention states were concerned. It
would have already been abolished by the Convention, which in providing
for where cases were to be heard also was conferring on the courts
given jurisdiction under the Convention powers and duties to consider
matters which may not, prior to the Convention, have been within their
competence. If that is so, the only qualification on a possibly wide scope
for forum shopping in intellectual property cases – bearing in mind the
possibilities of suing distributors as well as originators of products – would
be the principles of Shevill's case [1995] 2 A.C. 18, especially if applied as
I indicate above.
It is clear that this point is too important to be decided without full
argument. In this case it is raised only as an extra argument under article
22 and I do not think it right to decide it.
Discretion
Finally, even if the case did come within article 22, it is for the defendant
to persuade the court that it should stay the action or declinejurisdiction:
see Centro Internationale Handelsbank A.G. v. Morgan Grenfell Trade
Finance (unreported), 3 March 1997. I certainly would not take either
of those steps when I think, as I do, that normally the most convenient
forum for deciding an English trade mark or passing off case is this
court. In many cases a question of deceptive resemblance involving
language may be involved. Then I think it would be very difficult for a
court which uses a language other than English to form a reliable view on
the question, especially if it was marginal. In this case the question of a
deceptive resemblance hardly arises. But even so the German court would
have to import both the evidence and the law, whereas neither of those
things would be necessary if the action proceeds here.
It is submitted that it would be better if all questions were decided by
a single court and that multiple litigation should be avoided. That, as
a generality, is of course always true, but on the other hand when an
enterprise wants to use a mark or word throughout the world – and that
may include an Internet address or domain name – it must take into
account that in some places, if not others, there may be confusion. Here
it is clear that D.C. knew that M. used the name "IW." and I do not think
it is surprising that it is met with actions in places where confusion is
considered likely. So I decline to set aside service.