Sportswear Spa & Anor v Stonestyle Ltd

Sportswear Spa & Anor v Stonestyle Ltd

It is arguable that a sufficiently close nexus between an agreement in breach of Article 81 EC Treaty and the enforcement of trade mark rights may provide a defence to a trade mark infringement claim under section 12(2) of the Trade Marks Act 1994. The law is not settled, and the defence is not bound to fail as a matter of law; therefore, the paragraphs should not have been struck out at the interlocutory stage.

Parties
Claimant: SPORTSWEAR SpA; Claimant: FOUR MARKETING LIMITED; Defendant: STONESTYLE LIMITED
Jurisdiction
England and Wales
Judgment Date
11 April 2006
Procedural Posture
Civil Appeal / Appeal From High Court (chancery Division) on Interlocutory Application (strike Out)
Outcome
Appeal allowed
Legal Topics
Trade Marks, Parallel Imports, Market Partitioning, Article 81 EC Treaty, Section 12 Trade Marks Act 1994, Distribution Agreements, Strike Out Applications
Intellectual Property Law Competition Law European Union Law Trade Marks Parallel Imports Market Partitioning Article 81 EC Treaty Section 12 Trade Marks Act 1994 +2 more

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Parties

SPORTSWEAR SpA

Claimant

FOUR MARKETING LIMITED

Claimant

STONESTYLE LIMITED

Defendant

Procedural Posture

Civil Appeal / Appeal From High Court (chancery Division) on Interlocutory Application (strike Out)

Legal Issues

  1. 1 Whether paragraphs 16 to 18 of the Defence, alleging breach of Article 81 EC Treaty by the Claimants, should be struck out for lack of sufficient nexus to the trade mark infringement claim.
  2. 2 Whether a breach of Article 81 EC Treaty can provide a defence (as opposed to only a counterclaim) to a trade mark infringement action under section 12(2) of the Trade Marks Act 1994.
  3. 3 Whether the litigation itself, brought pursuant to an agreement in breach of Article 81, is itself contrary to Article 81.

Ratio Decidendi

It is arguable that a sufficiently close nexus between an agreement in breach of Article 81 EC Treaty and the enforcement of trade mark rights may provide a defence to a trade mark infringement claim under section 12(2) of the Trade Marks Act 1994. The law is not settled, and the defence is not bound to fail as a matter of law; therefore, the paragraphs should not have been struck out at the interlocutory stage.

Court Disposition

Appeal allowed

Orders

  • Order striking out paragraphs 16 to 18 of the Defence discharged
  • Matter remitted to the Chancery Division for the outstanding pleading issue to be resolved