Poul Chang Metal Industry Company Ltd v Bailcast Ltd & Anor [2018] EWHC 3432 (Ch) (31 October 2018)

Poul Chang Metal Industry Company Ltd v Bailcast Ltd & Anor [2018] EWHC 3432 (Ch) (31 October 2018)

The German and English proceedings do not involve the same parties for Article 29, so no mandatory stay is required. While the actions are related under Article 30, the court declines to exercise its discretion to stay the English proceedings, as any risk of inconsistent judgments is of the defendants' making and the English court will have the benefit of the German decision before trial. Abandonment of the invalidity claim constitutes discontinuance of part of the claim, requiring a Notice of Discontinuance and associated costs. The defendants' conduct did not amount to an abuse of process for lifting the IPEC costs cap.

Citation
[2018] EWHC 3432 (Ch)
Parties
Claimant: Poul Chang Metal Industry Company Limited; First Defendant: Bailcast Limited; Second Defendant: Mr Philip Fields Hayward
Jurisdiction
England and Wales
Judgment Date
31 October 2018
Procedural Posture
Intellectual Property Registered Community Design Application for Stay and Discontinuance / Interlocutory Judgment on Application for Stay and Procedural Discontinuance
Outcome
Defendants' application for a stay refused; claimant required to file Notice of Discontinuance for invalidity claim; costs orders as specified.
Legal Topics
Registered Community Design, Jurisdiction, Stay of Proceedings, Discontinuance, Forum Shopping, Costs
Intellectual Property Civil Procedure European Union Law Registered Community Design Jurisdiction Stay of Proceedings Discontinuance Forum Shopping +1 more

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Parties

Poul Chang Metal Industry Company Limited

Claimant

Bailcast Limited

First Defendant

Mr Philip Fields Hayward

Second Defendant

Procedural Posture

Intellectual Property Registered Community Design Application for Stay and Discontinuance / Interlocutory Judgment on Application for Stay and Procedural Discontinuance

Legal Issues

  1. 1 Whether proceedings should be stayed under Articles 29 or 30 of the Recast Brussels Regulation pending related German proceedings
  2. 2 Whether the claimant must file a Notice of Discontinuance to abandon part of its claim (declaration of invalidity)
  3. 3 Whether the defendants' conduct amounted to an abuse of process for costs purposes

Ratio Decidendi

The German and English proceedings do not involve the same parties for Article 29, so no mandatory stay is required. While the actions are related under Article 30, the court declines to exercise its discretion to stay the English proceedings, as any risk of inconsistent judgments is of the defendants' making and the English court will have the benefit of the German decision before trial. Abandonment of the invalidity claim constitutes discontinuance of part of the claim, requiring a Notice of Discontinuance and associated costs. The defendants' conduct did not amount to an abuse of process for lifting the IPEC costs cap.

Court Disposition

Defendants' application for a stay refused; claimant required to file Notice of Discontinuance for invalidity claim; costs orders as specified.

Orders

  • Application for stay of proceedings refused.
  • Claimant must file Notice of Discontinuance to abandon invalidity claim.