Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 1553 (Ch) (19 May 2014)

Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 1553 (Ch) (19 May 2014)

The UK proceedings and Italian proceedings do not involve the same cause of action or end in view, so Article 109 CTMR does not apply; the application for a stay under Article 104 CTMR is refused due to rare and exceptional circumstances, as the main judgment has already been given; summary judgment is granted as the bad faith claim has no real prospect of success given the claimants' established goodwill and reputation at the relevant dates.

Citation
[2014] EWHC 1553 (Ch)
Parties
Claimant: Hearst Holdings Inc.; Claimant: Fleischer Studios Inc.; Defendant: A.V.E.L.A. Inc.; Defendant: Poeticgem Limited; Defendant: The Partnership (Trading) Limited; Defendant: U Wear Limited; Defendant: J Fox Limited
Jurisdiction
England and Wales
Judgment Date
19 May 2014
Procedural Posture
Intellectual Property/trade Mark Infringement and Passing Off / Post Trial Judgment on Jurisdictional Stay and Summary Judgment Application
Outcome
Summary judgment granted in favour of claimants; application for declaration of invalidity on bad faith grounds dismissed; applications for stay or declining jurisdiction refused.
Legal Topics
Trade Mark Infringement, Passing Off, Jurisdiction, Summary Judgment, Bad Faith Registration, Community Trade Mark Regulation, Brussels I Regulation
Intellectual Property Civil Procedure European Union Law Trade Mark Infringement Passing Off Jurisdiction Summary Judgment Bad Faith Registration +2 more

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Parties

Hearst Holdings Inc.

Claimant

Fleischer Studios Inc.

Claimant

A.V.E.L.A. Inc.

Defendant

Poeticgem Limited

Defendant

The Partnership (Trading) Limited

Defendant

U Wear Limited

Defendant

J Fox Limited

Defendant

Procedural Posture

Intellectual Property/trade Mark Infringement and Passing Off / Post Trial Judgment on Jurisdictional Stay and Summary Judgment Application

Legal Issues

  1. 1 Whether the UK court should decline jurisdiction or stay proceedings due to prior Italian actions under Article 109 and 104 CTMR and Article 28 Brussels I Regulation
  2. 2 Whether summary judgment should be granted on the defendants' bad faith invalidity claim against the claimants' trade marks

Ratio Decidendi

The UK proceedings and Italian proceedings do not involve the same cause of action or end in view, so Article 109 CTMR does not apply; the application for a stay under Article 104 CTMR is refused due to rare and exceptional circumstances, as the main judgment has already been given; summary judgment is granted as the bad faith claim has no real prospect of success given the claimants' established goodwill and reputation at the relevant dates.

Court Disposition

Summary judgment granted in favour of claimants; application for declaration of invalidity on bad faith grounds dismissed; applications for stay or declining jurisdiction refused.

Orders

  • Summary judgment granted for claimants on bad faith invalidity claim.
  • Application for declaration of invalidity on grounds of bad faith dismissed.