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| Jane Lambert |
An issue in SkyKick UK Ltd and another v Sky Ltd and others (Rev1) [2024] UKSC 36 (13 Nov 2024) was whether the UK courts retained their jurisdiction to determine pending proceedings involving EU trade marks after 31 Dec 2020 when EU law ceased to apply to the UK. I mentioned the issue in The Supreme Court's Judgment in SkyKick v Sky in NIPC Law on 19 Jan 2924 but did not discuss it in detail because it was secondary to whether a registration could be invalidated on the ground that the application to register the mark had been made in bad faith because the applicant did not have a genuine intention to use the mark in relation to some or all of the specified goods or services. I am returning to the jurisdiction issue here because Lord Kitchin devoted 91 paragraphs of his judgment and an appendix to the topic and Lord Reed, the President of the Supreme Court, added a further 38.
European Union Trade Mark Courts
Art 123 (1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification) (Text with EEA relevance) OJ L 154, 16.6.2017, p. 1–99 ("the EU Trade Mark Regulation") required EU member states to designate in their territories as limited a number as possible of national courts and tribunals of first and second instance to perform the functions assigned to them by that Regulation. Pursuant to reg 9 of the Community Trade Mark Regulations 1996 (SI 1996 No 1908) as amended by reg 3 of The Community Trade Mark (Designation of Community Trade Mark Courts) Regulations 2005 (SI 2005 No 440) the High Court and Court of Appeal were designated Community trade mark courts and later renamed EU trade mark courts in the UK. Art 124 of the EU Trade Mark Regulation conferred exclusive jurisdiction on those courts for infringement and declarations of non-infringement claims and counterclaims for revocation and declarations of invalidity.
Art 50 of the Treaty of European Union
Art 50 (2) of the Treaty on European Union required the EU to negotiate and conclude an agreement with a member state that had notified its intention of withdrawing setting out the arrangements for its withdrawal. Art 50 (3) of the Treaty further provided that the Treaties would cease to apply to the state in question from the date of entry into force of the withdrawal agreement or, failing that, two years after the notification, unless the European Council, in agreement with the member state concerned, unanimously decided to extend that period.
The Withdrawal Agreement
An Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community was concluded by the European Union and the British government. Art 126 of the Agreement provided for a transition or implementation period, that started on 31 Jan 2020 and ended on 31 Dec 2020. During that transition period EU law continued to apply to the UK pursuant to art 127 (1).
The Procedural History
As I noted in The Supreme Court's Judgment in SkyKick v Sky Sky Ltd., Sky International AG and Sky UK Ltd ("the Sky companies") issued proceedings against SkyKick UK Ltd and SkyKick Inc ("the SkyKick companies") for trade mark infringement and passing off before the 2016 referendum. The trial before Mr Justice Arnold and the reference to the Court of Justice of the European Union took place while the UK was still a member of the EU. The further proceedings before Lord Justice Arnold took place during the transition or implementation period. However, the appeal to the Court of Appeal took place after the end of that period. Even though they had gained ground in the Court of Appeal where the same or similar issues would have arisen, the Sky companies contended that the Supreme Court lost its jurisdiction to deal with EU trade marks after the end of the implementation period.
The EasyGroup Actions
The issue had been considered by the Chancellor, Sir Julian Flaux, in EasyGroup Ltd v Beauty Perfectionists Ltd [2021] EWHC 3385 (Ch); [2022] Bus LR 146; [2022] FSR 8 and by Mrs Justice Bacon in EasyGroup Ltd v Nuclei Ltd [2022] EWHC 901 (Ch); [2022] FSR 23. In the first of those actions, the defendants applied to strike out those parts of the claimant's claims that sought an injunction and other remedies outside the United Kingdom, on the basis that even though the present proceedings were pending as of 31 Dec 2020 (the date when the UK left the European Union) the High Court no longer had jurisdiction to grant a pan-EU injunction or other remedies in respect of alleged infringement of EUTMs. The Chancellor concluded that he retained jurisdiction to grant pan-European injunctions and dismissed the application. In para [91] of her judgment in the second action, the parties agreed that Mrs Justice Bacon should proceed on the basis that the court retained the same jurisdiction to deal with both infringement and validity of the EU marks as it had before 31 Dec 2020. They reached that decision after considering the Chancellor's judgment. The Sky companies argued that those cases were wrongly decided.
Sky's Contentions
Lord Kitchin noted in para [454] of his judgment that the Sky companies had submitted that, at the end of the transition period all EU trade mark rights in and relating to the UK were extinguished. Jurisdiction over infringement and validity of EU trade marks now lay exclusively with EU trade mark courts in the remaining EU member states. Neither the UK nor the EU had legislated for any EU court or tribunal to exercise any jurisdiction over or relating to any comparable UK trade mark that had been issued to EU trade mark owners after their EU trade marks ceased to apply to the UK, or for any court in the UK to exercise any jurisdiction over, or relating to, any EU trade mark in the territories of the remaining member states. Secondly, the Sky companies contended that as of 31 Dec 2020, no courts in the UK were in fact designated as EU trade mark courts to resolve the limited number of cases which were pending before those courts on that day. Thirdly, the Sky companies submitted that reg 6 and Sched 5 to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI 2019 No 269) effectively repealed the legislation designating UK courts as EU Trade Mark Courts."In the United Kingdom, as well as in the Member States in situations involving the United Kingdom, in respect of legal proceedings instituted before the end of the transition period and in respect of proceedings or actions that are related to such legal proceedings pursuant to Articles 29, 30 and 31 of Regulation (EU) No 1215/2012 of the European Parliament and of the Council, Article 19 of Regulation (EC) No 2201/2003 or Articles 12 and 13 of Council Regulation (EC) No 4/2009, the following acts or provisions shall apply:
.........
(b) the provisions regarding jurisdiction of Regulation (EU) 2017/1001......"
Lord Kitchin interpreted those words as follows in para [436]:
"(a) the provisions of the EUTM Regulation "regarding jurisdiction"
(b) 'shall apply'
(c) 'in the United Kingdom, as well as in Member States in situations involving the United Kingdom,
(d) 'in respect of legal proceedings instituted before the end of the transition period'."
This was consistent with the guidance of both the EU and UK Intellectual Property Offices which he referred to between paras [441] and [448].
Lord Reed reached the same conclusion as Lord Kitchin for much the same reasons.
Further Information
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