Intellectual Property Enterprise Court (Michael Tappin KC) Seraphine Ltd v Mamarella GmbH [2024] EWHC 425 (IPEC) (1 March 2024)
As is well known, our good friends on the other side of the North Sea are renowned for their sense of humour. Since I have to write an article on the riveting subject of service of process in Germany after Brexit I thought it would be fun to share this clip with you, It is repeated on German television every New Year's Eve. His Majesty the King referred to it in his speech at a banquet in his honour on his recent state visit. I was introduced to it by a Swiss friend who tells me that it is also popular in Austria and the German-speaking cantons of Switzerland.
The Connection with the Video
This video's connection with the subject matter of this article is that the procedure for serving process in EU member states is set out in Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast). That regulation ceased to apply to the United Kingdom at 23:00 on New Year's Eve in 2020, the same evening as the "Dinner for One" broadcast. The Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters OJ L 339, 21.12.2007, p. 3–41 contains very similar provisions to Regulation 1215/2012 and HM Government applied to rejoin it. Iceland, Liechtenstein and Switzerland would have countenanced British membership but not the European Commission (see EU Commission rejects the UK's Application to rejoin Lugano on 6 May 2021).
The Litigation
Seraphine Ltd. ("Seraphine") manufactures a range of maternity garments. Mamarella GmbH ("Mamarella") distributes such clothing in Germany. Seraphine alleged that Mamarella had infringed unregistered Community designs that it claims. It issued proceedings in the Intellectual Property Enterprise Court ("IPEC") on 13 June 2023.
The Applications
Seraphine attempted to serve these proceedings on Mamarella without the court's permission relying on the Anglo-German Convention of 20 March 1928 on Legal Proceedings in Civil and Commercial Matters. Mamarella applied for service to be set aside on 17 July 2023. Seraphin served Mamarella again under the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters whereupon Mamarella issued another application challenging the jurisdiction of the court and requesting a stay pending proceedings in Germany. Seraphine issued its own application for permission to amend its claim form and particulars of claim and both parties sought leave to adduce expert evidence on German law in relation to the stay application. Those applications came on before Mr Michael Tappin KC sitting as a deputy judge of the High Court on 26 Feb 2024. He handed down judgment on 1 March 2024 (see Seraphine Ltd v Mamarella GmbH [2024] EWHC 425 (IPEC)).
Choice of Jurisdiction Clause
CPR6.33 sets out a number of grounds under which a claim form can be served outside the United Kingdom without the permission of the court. One of them is CPR6.33 (2B) (b):
"The claimant may serve the claim form on a defendant outside the United Kingdom where, for each claim made against the defendant to be served and included in the claim form—
....................................
(b) a contract contains a term to the effect that the court shall have jurisdiction to determine that claim;"
Mr Tappin said that it was common ground that the Supreme Court in Four Seasons Holdings Inc v Brownlie [2017] UKSC 80 and Goldman Sachs International v Novo Banco SA [2018] UKSC 34 and the Court of Appeal in Kaefer Aislamientos SA de CV v AMS Drilling Mexico SA de CV [2019] EWCA Civ 10 had set the following test when addressing that rule:
"(i) that the claimant must supply a plausible evidential basis for the application of a relevant jurisdictional gateway; (ii) that if there is an issue of fact about it, or some other reason for doubting whether it applies, the Court must take a view on the material available if it can reliably do so; but (iii) the nature of the issue and the limitations of the material available at the interlocutory stage may be such that no reliable assessment can be made, in which case there is a good arguable case for the application of the gateway if there is a plausible (albeit contested) evidential basis for it."Mr Tappin observed that the Court of Appeal had added at para [9 of his judgment that:
"(a) a "plausible evidential basis" is an evidential basis showing that the claimant has the better argument and the burden of proof is on the claimant, (b) the court should seek to overcome evidential difficulties and arrive at a conclusion if it 'reliably' can using judicial common sense and pragmatism, (c) part (iii) of the test applies where the court is simply unable to form a conclusion on the evidence before it as to who has the better argument; to an extent it moves away from a relative test and introduces a test combining good arguable case and plausibility of evidence."
Whether there was a Contract
Seraphine relied on a set of standard terms and conditions some of which had been struck out. It was headed "Seraphine Limited Terms and conditions of sale" and had been signed by both parties. Clause 25 of those terms provided:
Seraphine contended that the alleged infringement of its unregistered Community designs was a breach of contract because clause 15 (a) of those terms and conditions stated that:"(a) The Contract and any dispute or claim arising out of or in connection with it or its subject matter or formation (whether or not such dispute or claim is contractual) shall be governed by, and construed in accordance with, the laws of England and Wales.
(b) The Company and the Buyer irrevocably agree that, subject to the following sentence, the courts of England and Wales shall have exclusive jurisdiction over any claim or matter arising under or in connection with the Contract (whether or not such dispute or claim is contractual) and that accordingly any proceedings in respect of any such claim or matter shall be brought in such courts. Nothing in the proceedings [sic] sentence shall limit the Company's right to take proceedings against the Buyer in any other court of competent jurisdiction."
"The Buyer shall ensure that each reference to and use of any of the Company's IPR by the Buyer is in a manner from time to time approved by the Company and is accompanied by an acknowledgement, in a form approved in writing by the Company, that the same is IPR of the Company."Mamarella contended that the terms only applied to "Contracts" that had been made upon the acceptance of "Orders" as defined by clause 2 of the terms. It conceded that it had placed orders but these fell outside that definition. It followed that the contracts formed upon the acceptance of the orders were not "Contracts" and that clause 25 did not apply to them.
The deputy judge gave permission to Seraphine to amend its particulars of claim to state how it had acquired unregistered Community design rights in the designs that were already the subject of a claim. However, he refused to allow Seraphone to claim infringement of unregistered Community designs in earlier designs as there was no evidence that Mamarella had accepted terms containing an exclusive jurisdiction clause in respect of disputes over those earlier designs.
As Mamarella had consented to an exclusive jurisdiction clause Mr Tappin refused a stay pending proceedings in Germany either on forum non conveniens or case management grounds. It followed that there was no longer a need to consider either side's application for expert evidence on German law relating to a stay.
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