The Black & Decker Corporation v Dvize BV

The Black & Decker Corporation v Dvize BV

The English court has jurisdiction under Article 125(5) of the EUTM Regulation because BDC established a good arguable case that Dvize threatened to use the Trade Marks in the UK after 9 October 2017. Dvize's offer of an undertaking not to use the Trade Marks in the UK pending trial renders the interim injunction application unnecessary, but if jurisdiction were lacking, the court would grant an interim injunction under Article 131.

Parties
Claimant: The Black & Decker Corporation; Defendant: DVIZE BV
Jurisdiction
England and Wales
Judgment Date
21 December 2017
Procedural Posture
Intellectual Property Dispute / Ruling on Jurisdiction and Interim Injunction Application
Outcome
Court has jurisdiction over BDC's claim for trade mark infringement in the UK; interim injunction not required due to undertaking.
Legal Topics
Trade Mark Infringement, Jurisdiction, Interim Injunction, Contractual Consent, Estoppel
Intellectual Property Commercial Law Trade Mark Infringement Jurisdiction Interim Injunction Contractual Consent Estoppel

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Parties

The Black & Decker Corporation

Claimant

DVIZE BV

Defendant

Procedural Posture

Intellectual Property Dispute / Ruling on Jurisdiction and Interim Injunction Application

Legal Issues

  1. 1 Whether the English court has jurisdiction under Article 125(5) of the EUTM Regulation over BDC's claim for trade mark infringement against Dvize
  2. 2 Whether Dvize has threatened to use the Trade Marks in the UK after 9 October 2017
  3. 3 Whether Dvize has consent to use the Trade Marks by virtue of the Maryland Agreement or estoppel

Ratio Decidendi

The English court has jurisdiction under Article 125(5) of the EUTM Regulation because BDC established a good arguable case that Dvize threatened to use the Trade Marks in the UK after 9 October 2017. Dvize's offer of an undertaking not to use the Trade Marks in the UK pending trial renders the interim injunction application unnecessary, but if jurisdiction were lacking, the court would grant an interim injunction under Article 131.

Court Disposition

Court has jurisdiction over BDC's claim for trade mark infringement in the UK; interim injunction not required due to undertaking.

Orders

  • Dvize undertakes not to use the Trade Marks in the UK until conclusion of trial or further order.