Seraphine Ltd v Mamarella GmbH - The Sequel

Author ich Licence CC BY-SA 3.p Deed Source Wikimedia Commons

German Federal Patent Court

Jane Lambert

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.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page, 

Brexit Briefing January 2021

HMS Endeavour

Artist Samuel Atkins  (1760-1910) National Library of Australia Source Wikipedia 

 

Jane Lambert

One of the arguments for brexit is that the world's fastest-growing markets lie outside Europe and membership of the European Union has hampered the United Kingdom's opportunities to supply them. The proponents of that argument counter the contention that the bargaining power of 28 nations is considerably greater than that of one with the assertion that the need of EU negotiators to take account of the interests of all member states and not just those of one means that British interests are compromised before negotiations with third countries even start.  Such compromise, they say, more than offsets the advantage of being part of a large bloc.

That thinking was apparent in Liz Truss's announcement that HMG had applied to join the Comprehensive and Progressive Trans-Pacific Partnership on 30 Jan 2021:

“Joining CPTPP will create enormous opportunities for UK businesses that simply weren’t there as part of the EU and deepen our ties with some of the fastest-growing markets in the world.

“It will mean lower tariffs for car manufacturers and whisky producers, and better access for our brilliant services providers, delivering quality jobs and greater prosperity for people here at home."

This may possibly be true of financial and other services and some high-value luxury goods like whisky but it is hard to see the attraction of the CPTPP for car manufacturers most of which are foreign-owned who invested in the UK purely for access to the EU car market.

The price of this freedom to apply for membership of trading blocs on the other side of the world and the other measures that the government may have in store quickly became apparent when customs officers impounded the sandwiches of British lorry drivers, inshore fisheries encountered difficulties in supplying continental customers and supermarket chains delays and obstacles in stocking branches in Northern Ireland. A dispute between the European Commission and AstraZeneca Plc over the performance of a contract to supply vaccine prompted the Commission unilaterally to take measures to restrict transit of vaccines across the border between the Irish Republic and Northern Ireland under art 16 of the Protocol on Ireland/Northern Ireland to the withdrawal agreement. 

Such disruption was a foreseeable - possibly even deliberate - consequence of decoupling the British economy from the European single market in order to open it up to the world. It is the start of an economic and social experiment pf which many of those who voted for brexit on order to limit immigration are unaware and would not otherwise have approved.  It is a gamble and it may take many years before it can be known whether it has paid off.

The focus of this blog is, of course, intellectual property and not polemics.  As I noted in the January Brexit Briefing  EU legislation including regulations establishing the EU trade mark, Community designs, Community plant varieties and other intellectual property rights ceased to apply to the UK from 23:00 on 31 Dec 2020. They have been replaced by a thicket of secondary legislation which I did my best to untangle in How Brexit has changed IP Law on 17 Dec 2021 and in my presentations on the subject on 26 Jan 2021 (see my slides and handout.

The CPTPP agreement contains provisions on intellectual property as I noted in British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements on 17 Aug 2020,  So, too, do the bilateral agreements that have been agreed with countries like Japan which I discussed in An Introduction to and Overview of the Comprehensive Economic Partnership Agreement with Japan on 28 Oct 2020.  Progress on negotiations with Australia, the CPTPP, Japan, New Zealand and the USA is being monitored in the "Trade Negotiations" pages of this blog.

Anyone wishing to discuss this article or any topic in it may call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Plant Breeders' Right after Brexit

A Saline Resistant Wheat Variety

Author US Department of Agriculture
Licence Copyright waived by US government
Source Wikipedia "Plant Breeding"

Jane Lambert

A plant breeders' right is the exclusive right to prevent reproduction, marketing, selling and certain other acts in relation to new plant varieties.  Plant breeders can acquire those rights for the UK alone by registering  the plant variety with the Plant Variety Rights Office in Cambridge. Alternatively, they can obtain such protection in all 28 EU member states including the UK by registering it with the Community Plant Variety Office ("CPVO") in Angers.

The legislation that established the CPVO and provides for plant breeders' rights throughout the EU is Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights ("the Plant Variety Rights Regulation").  That regulation will cease to apply to the UK once it leaves the EU by reason of art 50 (3) of the Treaty of European Union.  If HM government concludes a withdrawal agreement substantially on the terms of the draft that has circulated since the end of February the regulation will continue to apply to the UK until 31 Dec 2020.   If this country leaves without such an agreement the regulation will cease to apply after 29 March 2019.

On 12 Oct 2018 the Department for Agriculture, Food and Rural Affairs published a guidance note entitled Plant variety rights and marketing of seed and propagating material if there’s no Brexit deal in case the UK leaves the EU without a withdrawal agreement.  According to the note, existing Community plant variety rights belonging to British rights holders will continue to be recognized and enforced in the remaining EU member states. They will also be recognized and protected in the UK presumably because the regulation will be incorporated into our national law by s.3 of the European Union (Withdrawal) Act 2018.

The guidance states that where an application has been made to the CPVO but not granted before the UK leaves the EU, the applicant must make a fresh application to the Plant Variety Rights Office. However, the applicant will keep the same priority date and rely on the same test for distinctiveness, uniformity and stability.

The CPVO issued a Notice to Stakeholders regarding the withdrawal of the UK and EU rules in the field of Plant Variety Rights on 30 Jan 2018.

Anyone wishing to discuss this article or plant breeders' rights generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

EU Trade Marks and Community Designs after Brexit

Jane Lambert

At present it is possible to register a trade mark with the European Union Intellectual Property Office ("EUIPO") for the whole European Union including the United Kingdom as an EU trade mark ("EUTM"). Similarly, it is possible to register a design with the EUIPO for the whole EU including the UK as a registered Community design ("RCD").  Designs that are capable of being registered as RCDs are protected automatically from copying for 3 years from being made available to the public as unregistered Community designs ("UCD"). All those rights were created by regulations made under EU treaties that cease to apply to the UK when it leaves the EU.

If HM government concludes a withdrawal agreement with the EU before 29 March 2019, those regulations will continue to apply to the UK until 31 Dec 2020 when it is hoped that a new relationship with the EU will be in place.  If the UK leaves on 29 March 2019 without a withdrawal agreement, the provisions contained in the regulations will be preserved in the UK by s.3 of the European Union (Withdrawal) Act 2018.  The regulations will, of course, continue to apply in the states that remain in the EU.

It appears from the guidance Trade marks and designs if there’s no Brexit deal that legislation will be introduced to enable applicants for an EUTM or RCD at the time of Brexit to apply to the UK Intellectual Property Office ("the IPO")  for simillar trade mark or registered design protection.  They must make their application within 9 months of Brexit.  They will be able to retain the date of the EU application for priority purposesI.   Owners of EUTMs and RCDs will be able to convert their registrations into British trade marks or registered designs "with minimal administrative burden."  The guidance states that the "UK is also working, including with the World Intellectual Property Organisation, to provide continued protection in the UK from March 2019 for trade marks and registered designs filed through the Madrid and Hague Systems, and designating the EU as the area where they apply."

The implications for EUTM and RCD owners will be as follows:

• "existing registered EU trade marks or registered Community designs held will continue to be valid in the remaining EU member states
• protection of existing registered EU trade marks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with minimal administrative burden
• right holders will be notified that a new UK right has been granted. Any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out
• provision will be made regarding the status of legal disputes involving EU trade marks or registered Community designs which are ongoing before the UK courts and more information will be provided on this before the point at which the UK exits the EU
• applicants with a pending application for an EU trade mark or a registered Community design at the point of exit will be able to refile, within nine months from the date of exit, under the same terms for a UK equivalent right, retaining the EU application date for priority purposes
• applicants with pending applications for an EU trade mark or a registered Community design will not be notified and after exit will need to consider whether they refile with the Intellectual Property Office to obtain protection in the UK
• new applications will be eligible to be filed in the UK for UK trade marks and registered designs as they are now, and at the cost specified in the UK fee structure
• UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently,"

Finally, the guidance announces that a new intellectual property right, to be known as a "supplementary unregistered design right" with the characteristics of an UCD, will be established.  The guidance notes:

• "existing unregistered Community designs will continue to be valid in the remaining EU member states
• protection of existing unregistered Community designs in the UK will be provided for with no action required by the right holder
• provision will be made regarding the status of legal disputes involving unregistered Community designs which are ongoing before UK courts."

The EUIPO published frequently asked questions on the impact of the United Kingdom's withdrawal from the European Union on the European Union trade mark and the Community design on 18 Jan 2018 and a notice to holders of, and applicants for, EUTM and RCD on 1 Dec 2017,

Anyone wishing to discuss this article or Brexit generally should call me on +44 (0)20 7404 5252 during the usual office hours or send me a message through my contact page.

Brexit Briefing - April 2018

Jane Lambert

One European initiative upon which the United Kingdom has been consistently communautaire has been a single European patent for the whole European Union.  Her Majesty's government was one of the signatories to the Community Patent Convention in 1975 and one of the reasons for the Patents Act 1977 was to give effect to that Convention.  The Convention never came into force because other parties failed to ratify it.  Several attempts have been made to revive the initiative or to launch other initiatives through the European Union or the European Patent Convention. The British government has supported all of those initiatives but they have all come to nought.

The reason why the United Kingdom has supported those initiatives is obvious upon consulting TaylorWessing's Patent Map.  There is a comparison of the typical costs at first instance of an action for patent infringement in each of the jurisdictions of Europe and England and Wales is by far the most expensive. The cost of enforcement goes a long way to explaining why the United Kingdom consistently lags behind not only Germany and France with similar populations and GDP to ours in the number of European patent applications but also Switzerland with one eighth of our population and the Netherlands with a third (see European patent applications per country of origin on the European Patent Office website).  A single European patent covering the territories of the United Kingdom and those of its European partners with a single patents court for all those countries would level the playing field for British business.

As it did not prove possible to launch an EU patent because of objections from Spain and Italy the other member states decided to establish a single European patent for their territories by themselves through a procedure known as "enhanced cooperation" (see Jane Lambert The Community Patent is Dead - Long Live the Unitary Patent 29 April 2018 NIPC Law). The result was the Agreement on the Unified Patent Court ("the UPC Agreement") which was signed by Her Majesty's and other governments on 19 Feb 2013. The Agreement establishes a Unified Patents Court consisting of a Court of First Instance and a Court of Appeal and one of the sections of the Central Division of the Court Instance is to sit in London. The British government acquired premises for the new court in Aldgate and began to fit them out long before the Brexit referendum.

Art 89 of the UPC Agreement provides that it will come into force after 13 signatories including France, Germany and the United Kingdom ratify it.  Over 13 states including France have already done that.  On World Intellectual Property Day, which falls on 26 April. the Minister for Intellectual Property announced that the UK had also ratified the UPC Agreement (see Jane Lambert British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day 26 April 2018 NIPC News). The last remaining condition for the implementation of that Agreement is German ratification but that is delayed by litigation in the German Federal Constitutional Court.  The Alternative for Germany Party has also tried to repeal legislation to ratify the UPC Agreement that has been passed by both houses of the German Parliament and is now awaiting presidential assent.

It is not clear how long it will take for the Constitutional Court to determine the legal challenge to German ratification but it could easily exceed the time in which the UK will remain a member of the EU.  After that it is by no means clear whether the UK can remain a party to the UPC Agreement.  My own view is that it cannot but there is a contrary view held by, among others, the British government that the UPC Agreement is an international treaty that lies outside the EU.  The reason for my scepticism is that such a treaty would be incompatible with EU law for the reasons given by the Court of Justice of the European Union in Opinion 1/09 of 8 March 2011 (see Jane Lambert Court of Justice of the European Union holds European and Community Patent Court to be incompatible with EU Law 8 March 2011 NIPC website).

Our chances of remaining party to the UPC Agreement will depend in large part on whether we leave the EU with a withdrawal agreement and on our future relations with the remaining member states.  Although a lot of progress has been made in negotiations for a withdrawal agreement. Monsieur Barnier warned at the Hanover Trade Fair that it is not a done deal (see Jane Lambert Withdrawal Agreement - Not a Done Deal Yet 26 April 2018). He emphasized at the All-Island Civic Dialogue in Dundalk on 30 April 2018 that a likely stumbling block is the Irish border (see EU press release Speech by Michel Barnier at the All-Island Civic Dialogue of 30 April 2018 on the Commission website). British ideas for "maximum facilitation" and a "customs partnership" appear not to have been agreed even by the British cabinet let alone the EU. There are reports in today's Guardian that British civil servants have drawn up plans for customs checks between Great Britain and Ireland which would be in line with the draft withdrawal agreement (see Daniel Boffey Brexit plan drawn up for border checks between NI and rest of UK 4 May 2018 The Guardian).

Such a plan would be tantamount to the economic partitioning of the United Kingdom which could have all sorts of political and constitutional consequences beyond the obvious such as the withdrawal of DUP support for the Conservative administration and renewed requests by the Scottish government to remain in the single market and customs union. However, if it led to a free trade agreement that covered services it would be welcomed widely by the financial services industry.  Such an agreement is on the table (see the memorandum from the art 50 task force to the EU 27 Topics for discussions on the future framework at forthcoming meetings 4 May 2018). Monsieur Barnier made some encouraging remarks about London remaining an important financial centre after Brexit in his speech to the Eurofi think tank's high level seminar in Sofia on 26 April 2018 (see EU press release Speech by Michel Barnier at the Eurofi High-level Seminar 2018 at Sofia, 26 April 2018 on the Commission website).

Should anyone wish to discuss this briefing, the UPC Agreement or Brexit generally, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.