Millen v Karen Millen Fashions Ltd & Anor

Millen v Karen Millen Fashions Ltd & Anor

The restrictive covenants in the SPA are not frozen in time and apply to the goodwill and business as they develop after the SPA. The Claimant's proposed use of 'KAREN MILLEN' and 'KAREN' marks for a wide range of goods and services, including in the USA and China, would in many instances breach clause 5.1.7 of the SPA due to the likelihood of confusion. The Claimant is obliged under clause 10 (further assurance) to consent to the Defendants' trade mark registrations. The Defendants' US proceedings breached the exclusive jurisdiction clause (clause 21.2) of the SPA. Negative declarations sought by the Claimant were too broad and insufficiently defined to be granted.

Parties
Claimant: Karen Denise Millen; First Defendant: Karen Millen Fashions Limited; Second Defendant: Mosaic Fashions US Limited
Jurisdiction
England and Wales
Judgment Date
16 August 2016
Procedural Posture
Civil (commercial, Intellectual Property, Contract) / Judgment After Full Trial
Outcome
Judgment for the Defendants on the main issues; judgment for the Claimant on certain subsidiary issues; further submissions invited on form of order and relief.
Legal Topics
Restrictive Covenants, Trade Marks, Passing Off, Contractual Interpretation, Restraint of Trade, Jurisdiction Clauses, Further Assurance Clauses, Negative Declarations
Contract Law Intellectual Property Law Commercial Law Restrictive Covenants Trade Marks Passing Off Contractual Interpretation Restraint of Trade +3 more

Case Brief

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Parties

Karen Denise Millen

Claimant

Karen Millen Fashions Limited

First Defendant

Mosaic Fashions US Limited

Second Defendant

Procedural Posture

Civil (commercial, Intellectual Property, Contract) / Judgment After Full Trial

Legal Issues

  1. 1 Whether the restrictive covenants in the SPA (Share Purchase Agreement) are enforceable and to what extent
  2. 2 Whether the Claimant's proposed use and registration of trade marks breaches the SPA
  3. 3 Whether the Claimant is obliged to consent to the Defendants' trade mark registrations under the further assurance clause

Ratio Decidendi

The restrictive covenants in the SPA are not frozen in time and apply to the goodwill and business as they develop after the SPA. The Claimant's proposed use of 'KAREN MILLEN' and 'KAREN' marks for a wide range of goods and services, including in the USA and China, would in many instances breach clause 5.1.7 of the SPA due to the likelihood of confusion. The Claimant is obliged under clause 10 (further assurance) to consent to the Defendants' trade mark registrations. The Defendants' US proceedings breached the exclusive jurisdiction clause (clause 21.2) of the SPA. Negative declarations sought by the Claimant were too broad and insufficiently defined to be granted.

Court Disposition

Judgment for the Defendants on the main issues; judgment for the Claimant on certain subsidiary issues; further submissions invited on form of order and relief.

Orders

  • Negative declarations sought by the Claimant refused as too broad and unclear.
  • Claimant obliged to consent to Defendants' trade mark registrations under clause 10.