The Black & Decker Corporation v Dvize BV [2017] EWHC 3387 (Ch) (21 December 2017)

The Black & Decker Corporation v Dvize BV [2017] EWHC 3387 (Ch) (21 December 2017)

The court held that the claimant established a good arguable case that the defendant threatens to use the trade marks in the UK after termination of consent, thereby conferring jurisdiction under Article 125(5) of the EUTM Regulation. The defendant's arguments on consent and estoppel did not displace the claimant's case at this interlocutory stage. The court therefore refused the defendant's jurisdiction challenge and accepted jurisdiction over the claim for trade mark infringement in the UK.

Citation
[2017] EWHC 3387 (Ch)
Parties
Claimant: The Black & Decker Corporation; Defendant: Dvize BV
Jurisdiction
England and Wales
Judgment Date
21 December 2017
Procedural Posture
Interim Injunction and Jurisdiction Challenge in Trade Mark Infringement Proceedings / Interlocutory Applications Before Trial
Outcome
Jurisdiction challenge dismissed; court accepts jurisdiction over the claim for trade mark infringement in the UK.
Legal Topics
Trade Mark Infringement, Jurisdiction, Interim Injunctions, Consent and Estoppel, EU Trade Mark Regulation
Intellectual Property Civil Procedure Trade Mark Infringement Jurisdiction Interim Injunctions Consent and Estoppel EU Trade Mark Regulation

Case Brief

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Parties

The Black & Decker Corporation

Claimant

Dvize BV

Defendant

Procedural Posture

Interim Injunction and Jurisdiction Challenge in Trade Mark Infringement Proceedings / Interlocutory Applications Before Trial

Legal Issues

  1. 1 Whether the English court has jurisdiction under Article 125(5) of the EUTM Regulation over the claim for trade mark infringement against a Dutch defendant
  2. 2 Whether there is a good arguable case that the defendant has threatened to infringe the claimant's EU trade marks in the UK
  3. 3 Whether the defendant has consent to use the trade marks by virtue of an alleged agreement or estoppel

Ratio Decidendi

The court held that the claimant established a good arguable case that the defendant threatens to use the trade marks in the UK after termination of consent, thereby conferring jurisdiction under Article 125(5) of the EUTM Regulation. The defendant's arguments on consent and estoppel did not displace the claimant's case at this interlocutory stage. The court therefore refused the defendant's jurisdiction challenge and accepted jurisdiction over the claim for trade mark infringement in the UK.

Court Disposition

Jurisdiction challenge dismissed; court accepts jurisdiction over the claim for trade mark infringement in the UK.

Orders

  • Defendant's application challenging jurisdiction is dismissed.
  • Claimant's application for interim injunction to be considered further in light of the court's jurisdiction.