The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America

The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America

Article 105(2) of the Community Trade Mark Regulation does not require the UK court to reject the infringement proceedings because the French proceedings were opposition proceedings, not infringement actions, and there is no dual identity of marks. The UK court retains jurisdiction. The appeal is dismissed.

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
Civil Appeal (trade Mark Infringement) / Appeal From High Court to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Trade Mark Infringement, Jurisdiction, Community Trade Mark Regulation, Brussels Convention, Res Judicata, Estoppel
Intellectual Property Civil Procedure European Law Trade Mark Infringement Jurisdiction Community Trade Mark Regulation Brussels Convention Res Judicata +1 more

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Parties

The Prudential Assurance Company Limited

Claimant/respondent

The Prudential Insurance Company of America

Defendant/appellant

Procedural Posture

Civil Appeal (trade Mark Infringement) / Appeal From High Court 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 should decline jurisdiction or stay proceedings under the Brussels Convention or Community Trade Mark Regulation
  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 the infringement proceedings because the French proceedings were opposition proceedings, not infringement actions, and there is no dual identity of marks. The UK court retains jurisdiction. The appeal is dismissed.

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed with costs subject to detailed assessment
  • Interim payment of £40,000 to be paid within 21 days