The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America [2003] EWCA Civ 327 (12 March 2003)

The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America [2003] EWCA Civ 327 (12 March 2003)

Article 105(2) of the Community Trade Mark Regulation does not require the UK court to reject infringement proceedings because the French court was seized on the basis of a national trade mark, not a Community trade mark, and the marks are not identical. Opposition proceedings are not equivalent to infringement actions for the purposes of Article 105. The UK court retains jurisdiction to hear the infringement claims.

Citation
[2003] EWCA Civ 327
Parties
Claimant/respondent: The Prudential Assurance Company Limited; Defendant/appellant: The Prudential Insurance Company of America
Jurisdiction
England and Wales
Judgment Date
12 March 2003
Procedural Posture
Appeal (civil) / Appeal From High Court (chancery Division) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Trade Mark Infringement, Jurisdiction, Community Trade Mark Regulation, Brussels Convention, Estoppel, Res Judicata
Intellectual Property Civil Procedure European Union Law Trade Mark Infringement Jurisdiction Community Trade Mark Regulation Brussels Convention Estoppel +1 more

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Parties

The Prudential Assurance Company Limited

Claimant/respondent

The Prudential Insurance Company of America

Defendant/appellant

Procedural Posture

Appeal (civil) / Appeal From High Court (chancery Division) to Court of Appeal

Legal Issues

  1. 1 Whether Article 105(2) of the Community Trade Mark Regulation requires the UK court to reject infringement proceedings due to a prior French judgment on registration of 'PRUMERICA'
  2. 2 Whether the UK court has jurisdiction to hear trade mark infringement claims where similar issues have been decided in another EU Member State
  3. 3 Whether opposition proceedings are equivalent to infringement actions for the purposes of Article 105

Ratio Decidendi

Article 105(2) of the Community Trade Mark Regulation does not require the UK court to reject infringement proceedings because the French court was seized on the basis of a national trade mark, not a Community trade mark, and the marks are not identical. Opposition proceedings are not equivalent to infringement actions for the purposes of Article 105. The UK court retains jurisdiction to hear the infringement claims.

Court Disposition

Appeal dismissed

Orders

  • Proceedings on the infringement claims may proceed to trial in the UK.