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| Author ich Licence CC BY-SA 3.p Deed Source Wikimedia Commons German Federal Patent Court |
Intellectual Property Enterprise Court (Michael Tappin KC) Seraphine Ltd v Mamarella GmbH [2024] EWHC 1507 (IPEC) (18 June 2024)
In Service of Process in Germany After Brexit - Seraphine Ltd v Mamarella GmbH, I discussed the difficulties of serving parties in Germany following the United Kingdom's departure from the European Union and its exclusion from the Lugano Convention. The defendant, Mamarella GmbH ("Mamarella") had challenged the jurisdiction of the court and applied for the service to be set aside. The difficulties were not resolved until Mr Michael Tappin KC held in Seraphine Ltd v Mamarella GmbH [2024] EWHC 425 (IPEC) on 1 March 2024 that the claimant, Seraphine Ltd ("Seraphine") had been entitled to serve process without the permission of the court and rejected Mamarella's challenge to the court's jurisdiction.
In my case note, I mentioned that Mamarella had applied for a stay of the English proceedings pending proceedings in Germany and that that application had been refused by the deputy judge. it appears from para [3] of a further judgment from Mr Tappin that that was not the case. Mamarella's application had been based on forum non conveniens and case management grounds. Mamarella conceded that a party that had agreed to an English jurisdiction clause required overwhelming reasons for a stay on forum non conveniens grounds but it did not abandon its case on case management grounds. As it appeared that the German proceedings were about to be resolved Mamarella agreed to an order adjourning its application generally with liberty to restore before 24 May 2024 which was also the date upon which Mr Tappin had ordered a defence to be served.
The German proceedings were not resolved before 24 May 2024. Instead, a fresh date for an oral hearing was fixed for 18 Nov 2024. Judgment is likely to be handed down between 4 and 8 weeks later. In accordance with its liberty to restore, Mamarella renewed its application for a stay. Mamarella's case was that the German proceedings were for a declaration that Mamarella has not, through its advertising or sale of 30 identified products (some of which are in issue in the English proceedings), infringed any unregistered Community design rights of Seraphine, and that Seraphine is not entitled to make any unfair competition claim in that regard. Mamarella argued that in respect of the designs that are in issue in both sets of proceedings a finding by the German court would entitle the successful party to claim that the issue was res judicata.
Mr Tappin was not persuaded. In Seraphine Ltd v Mamarella GmbH [2024] EWHC 1507 (IPEC) (18 June 2024) he ordered Mamarella to serve its defence by 3 July 2023 and Seraphone to serve its reply by 31 July 2024. It was clear from its solicitor's witness statement that preparations for service of its defence were well advanced by 24 May 2024. He said that he had identified over 80 pieces of potential prior art. As for the designs that were in issue in both sets of proceedings the deputy judge noted that Mamarella was ready to proceed in the German action in March. If Mamarella wanted to plead res judicata it could do so now. A case management conference which was likely to be held in early Autumn could consider the appropriate directions for trial including any that might relate to a judgment by the German court.
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