Guccio Gucci SpA v Shipton & Heneage Ltd

Guccio Gucci SpA v Shipton & Heneage Ltd

There are no special grounds justifying refusal of a stay of the CTM infringement claims; the proceedings for infringement of CTMs are stayed pending OHIM's decision. Claims based on national trade marks and passing off are not stayed and may proceed to trial, as the factors against a stay, particularly delay, outweigh those in favour.

Parties
Claimant/respondent: Guccio Gucci SpA; Defendant/applicant: Shipton & Heneage Limited
Jurisdiction
England and Wales
Judgment Date
18 June 2010
Procedural Posture
Intellectual Property (trade Mark) Dispute / Interlocutory Application for Stay of Proceedings
Outcome
Partial stay granted
Legal Topics
Community Trade Marks (ctms), National Trade Marks, Passing Off, Stay of Proceedings, Jurisdiction, Abuse of Process
Intellectual Property Civil Procedure Community Trade Marks (ctms) National Trade Marks Passing Off Stay of Proceedings Jurisdiction Abuse of Process

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Parties

Guccio Gucci SpA

Claimant/respondent

Shipton & Heneage Limited

Defendant/applicant

Procedural Posture

Intellectual Property (trade Mark) Dispute / Interlocutory Application for Stay of Proceedings

Legal Issues

  1. 1 Whether proceedings for infringement of Community Trade Marks (CTMs) should be stayed pending OHIM's decision on validity
  2. 2 Whether national trade mark and passing off claims should also be stayed
  3. 3 Whether there are 'special grounds' to refuse a stay under Article 104 CTMR

Ratio Decidendi

There are no special grounds justifying refusal of a stay of the CTM infringement claims; the proceedings for infringement of CTMs are stayed pending OHIM's decision. Claims based on national trade marks and passing off are not stayed and may proceed to trial, as the factors against a stay, particularly delay, outweigh those in favour.

Court Disposition

Partial stay granted

Orders

  • Proceedings for infringement of CTMs are stayed pending OHIM's decision on validity.
  • Claims based on national trade marks and passing off are not stayed and may proceed to trial.