Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors

Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors

The UK and Italian proceedings did not involve the same cause of action or facts, so Article 109 CTMR did not apply. Although Article 104 CTMR applied, the advanced stage of the UK proceedings and the fact that judgment had already been given constituted rare and exceptional circumstances justifying refusal of a stay. The defendants' bad faith invalidity claim had no real prospect of success because the claimants had established goodwill and reputation at the relevant dates, so summary judgment was granted in favour of the claimants.

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 and Passing Off / Post Trial Applications and Summary Judgment
Outcome
Summary judgment granted for claimants; application for declaration of invalidity on grounds of bad faith dismissed; no stay or decline of jurisdiction ordered.
Legal Topics
Trade Mark Infringement, Passing Off, Community Trade Mark Regulation, Jurisdiction and Stays, Summary Judgment, Bad Faith Registration
Intellectual Property Law Civil Procedure European Union Law Trade Mark Infringement Passing Off Community Trade Mark Regulation Jurisdiction and Stays Summary Judgment +1 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 and Passing Off / Post Trial Applications and Summary Judgment

Legal Issues

  1. 1 Whether the UK court should decline jurisdiction or stay proceedings due to parallel Italian actions under Article 109 CTMR, Article 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 and Italian proceedings did not involve the same cause of action or facts, so Article 109 CTMR did not apply. Although Article 104 CTMR applied, the advanced stage of the UK proceedings and the fact that judgment had already been given constituted rare and exceptional circumstances justifying refusal of a stay. The defendants' bad faith invalidity claim had no real prospect of success because the claimants had established goodwill and reputation at the relevant dates, so summary judgment was granted in favour of the claimants.

Court Disposition

Summary judgment granted for claimants; application for declaration of invalidity on grounds of bad faith dismissed; no stay or decline of jurisdiction ordered.

Orders

  • Defendants' application for stay or declining jurisdiction under Article 109 CTMR, Article 104 CTMR, and Article 28 Brussels I Regulation refused.
  • Claimants' application for summary judgment on the bad faith invalidity claim granted.