Guccio Gucci SpA v Shipton & Heneage Ltd [2010] EWHC 1739 (Ch) (18 June 2010)

Guccio Gucci SpA v Shipton & Heneage Ltd [2010] EWHC 1739 (Ch) (18 June 2010)

There are no special grounds justifying refusal of a stay of the CTM infringement claims under Article 104 CTMR; the national trade mark and passing off claims are not subject to Article 104 and, exercising discretion under section 49(3) Senior Courts Act 1981, the balance of factors (especially delay) favours allowing those claims to proceed.

Citation
[2010] EWHC 1739 (Ch)
Parties
Claimant/respondent: Guccio Gucci SpA; Defendant/applicant: Shipton & Heneage Limited
Jurisdiction
England and Wales
Judgment Date
18 June 2010
Procedural Posture
Intellectual Property Infringement and Passing Off / Interlocutory Application for Stay of Proceedings
Outcome
Application for stay of CTM claims granted; national trade mark and passing off claims to proceed.
Legal Topics
Trade Marks, Community Trade Marks (ctms), National Trade Marks, Passing Off, Stay of Proceedings, Jurisdiction, Discretionary Stays
Intellectual Property Civil Procedure Trade Marks Community Trade Marks (ctms) National Trade Marks Passing Off Stay of Proceedings Jurisdiction +1 more

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Parties

Guccio Gucci SpA

Claimant/respondent

Shipton & Heneage Limited

Defendant/applicant

Procedural Posture

Intellectual Property Infringement and Passing Off / 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 What constitutes '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 under Article 104 CTMR; the national trade mark and passing off claims are not subject to Article 104 and, exercising discretion under section 49(3) Senior Courts Act 1981, the balance of factors (especially delay) favours allowing those claims to proceed.

Court Disposition

Application for stay of CTM claims granted; national trade mark and passing off claims to proceed.

Orders

  • Stay of proceedings in respect of CTM infringement claims pending OHIM decision.
  • National trade mark and passing off claims allowed to proceed to trial.