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  • Writer's pictureRosie Burbidge

When should a trade mark case be stayed?

Complicated and interconnected glass in a Chihuly sculpture to illustrate the complexities of parallel proceedings

The Court of Appeal has reconsidered whether a stay should be granted in an IP Enterprse Court (IPEC) case concerning trade marks for knitting needles.

The background to the case is complex and multi-jurisdictional, but in essence it concerns allegations of trade mark infringement made by KnitPro against Crafts. Crafts made claims of unjustified threats and alleged that KnitPro’s EU and corresponding UK trade marks for a chevron (pictured below) are invalid.

The Knitpro trade mark

As reported last year, at first instance His Honour Judge Hacon agreed to stay all the claims in the case pending the outcome of proceedings at EUIPO concerning the EU trade mark.

Following that judgment, Crafts appealed and both parties changed their positions somewhat. In short, there was no longer a claim for infringement of the EU trade mark and it was conceded that Article 132(1) of the Trade Mark Regulation does not apply. In other words, the case has become much more UK-centric.

Re-exercising discretion

In the circumstances, the Court said it would save time and money to re-exercise the discretion on granting a stay itself, rather than sending the question back to the IPEC. It took account of the 13-point guidance given by Floyd LJ in IPCom v HTC, a patent case involving parallel EPO proceedings.

In his judgment, Arnold LJ noted that a decision on the EU trade mark would take at least five years whereas the IPEC could determine the claims in nine to 10 months. Moreover, many of the issues between the parties would not be affected by the outcome of the EU case, and indeed resolving them may well determine the whole dispute or at least help the parties reach a settlement.

Although allowing the claims to proceed could lead to the need for a second trial, there should be little duplication and extra costs would not be significant.

By contrast, a complete stay would lead to a minimum five-year delay, which would be in the interests of neither side, said Arnold LJ:

“Counsel for KnitPro was unable to explain why, apart from avoiding the risk of having two trials rather than one, a five year delay would be in his clients' interests given that they are seeking relief, including injunctions, for trade mark infringement and passing off. Normally it is in the interests of parties in that position to vindicate their rights as soon as possible, as I have explained in a number of recent judgments.”

The balance of justice therefore favoured only a limited stay.

What does this mean for trade mark disputes?

The case illustrates that issues arising from Brexit – in this case parallel proceedings regarding EU and UK trade marks – continue to come before the courts and pose interesting questions.

The Court of Appeal’s judgment emphasises that the UK courts will prioritise speedy justice, even where both parties are not pushing for it.

It also highlights the different time scales between trade mark litigation in the UK and EU: less than a year to first instance, and possibly the same for an appeal, in the former versus up to five years in the latter (EUIPO first instance, Board of Appeal, EU General Court and possibly CJEU).

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -


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