THE UNIVERSITY COURT OF THE UNIVERSITY OF ST ANDREWS AGAINST STUDENT GOWNS LTD [2019] ScotCS CSOH_86 (08 November 2019)

THE UNIVERSITY COURT OF THE UNIVERSITY OF ST ANDREWS AGAINST STUDENT GOWNS LTD [2019] ScotCS CSOH_86 (08 November 2019)

The Scottish Court of Session has jurisdiction because Scotland is a place where the damage occurred or may occur for both trade mark infringement and passing off, given the substantial connection to Scotland through targeted online advertising and physical sales to students there. The defender failed to show that England and Wales is clearly or distinctly a more appropriate forum; the connecting factors do not outweigh the pursuer’s right to choose Scotland, and no parallel proceedings or substantial overlap with other disputes exist.

Citation
[2019] ScotCS CSOH_86
Parties
Pursuer: The University Court of the University of St Andrews; Defender: Student Gowns Ltd
Jurisdiction
Scotland
Judgment Date
08 November 2019
Procedural Posture
Intellectual Property, Civil / Preliminary Proof Before Answer on Jurisdiction and Forum Non Conveniens
Outcome
Defender's pleas of no jurisdiction and forum non conveniens repelled; Scottish court retains jurisdiction.
Legal Topics
Trade Mark Infringement, Passing Off, Jurisdiction, Forum Non Conveniens, Online Advertising, Competition Law
Intellectual Property Civil Procedure Conflict of Laws Trade Mark Infringement Passing Off Jurisdiction Forum Non Conveniens Online Advertising +1 more

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Parties

The University Court of the University of St Andrews

Pursuer

Student Gowns Ltd

Defender

Procedural Posture

Intellectual Property, Civil / Preliminary Proof Before Answer on Jurisdiction and Forum Non Conveniens

Legal Issues

  1. 1 Whether the Scottish Court of Session has jurisdiction over claims of trade mark infringement and passing off against an English company marketing and selling gowns to students in Scotland, including via online channels.
  2. 2 Whether the proceedings should be stayed or dismissed on the ground of forum non conveniens in favour of England and Wales.

Ratio Decidendi

The Scottish Court of Session has jurisdiction because Scotland is a place where the damage occurred or may occur for both trade mark infringement and passing off, given the substantial connection to Scotland through targeted online advertising and physical sales to students there. The defender failed to show that England and Wales is clearly or distinctly a more appropriate forum; the connecting factors do not outweigh the pursuer’s right to choose Scotland, and no parallel proceedings or substantial overlap with other disputes exist.

Court Disposition

Defender's pleas of no jurisdiction and forum non conveniens repelled; Scottish court retains jurisdiction.

Orders

  • Repel the defender’s first and second pleas-in-law (no jurisdiction and forum non conveniens).
  • Reserve all questions relating to expenses.