McCarthy Denning’s IP Team has succeeded in an appeal for Crafts Group LLC
The IP team at McCarthy Denning, with Michael Edenborough KC and Stephanie Wickenden of Serle Court chambers, has succeeded in an appeal for their client Crafts Group LLC. The case has a complex procedural background but in summary it started life as an action by Crafts claiming remedies for damage caused by unjustified threats of trade mark infringement by way of Amazon takedown notices filed by the trade mark proprietor. The trade mark proprietor counterclaimed for infringement of two EU trade marks and their UK clones, and Crafts counter-counterclaimed for invalidity or revocation of one of those trade marks (both the EU and UK parts of that trade mark).
The Intellectual Property Enterprise Court stayed the whole action
1) on the erroneous basis that the EU Trade Mark Regulations applied and that actions for unjustified threats qualified as actions which must be stayed pending resolution of EU invalidity actions relating to the same mark, and
2) exercise of case management discretion.
The trade mark proprietor then discontinued its infringement action based on the EU trade marks, but continued to argue that the stay should remain.
The Court of Appeal held that the discontinuance of the EU TM infringement actions had fundamentally changed the complexion of the case such that the judge’s exercise of his discretion with respect to case management could no longer stand. The Court of Appeal then decided that it could re-exercise the discretion itself rather than remitting the matter back to the court of first instance, and applied the reasoning of the guidelines used to decide whether patent cases with co-pending actions at the EPO (the IPCom guidelines) to allow the appeal by Crafts and set aside the first instance judge’s order.
The full judgment can be read by clicking here
This case was covered by Law360 and can be read by clicking here
DATE 09/02/2024
