English courts can still grant pan-EU trade mark injunctions, judge rules

The English courts can still grant a pan-EU trade mark injunction in proceedings commenced before the end of the Brexit implementation period, the High Court has confirmed.

The chancellor of the High Court, Sir Julian Flaux, held that the jurisdiction to grant a pan-EU injunction for alleged trade mark infringement, which the court ‘undoubtedly had before Brexit’, has been ‘preserved’ in relation to pending proceedings.

Flaux also said that the Withdrawal Agreement has ‘direct legislative effect in the United Kingdom’ through section 7A of the EU Withdrawal Act 2018, as inserted by section 5 of the EU Withdrawal Agreement Act 2020.

In Easygroup Ltd v Beauty Perfectionists Ltd and others, the court was asked to consider an application to strike out parts of the claimant’s claims for alleged infringement of EU trade marks which sought an injunction and other remedies outside the UK.

The claimant, the owner of brands including the airline easyJet, brought a claim over online sales of cosmetic and beauty products under the name easyCOSMETICS, which it alleges infringe its intellectual property rights.

The defendants applied to strike out those parts of the claimant’s claims which sought an injunction and other remedies outside the UK, on the basis that the High Court no longer has jurisdiction to grant a pan-EU injunction or other remedies in respect of alleged infringement of EU trade marks.

In a ruling earlier this month, Flaux found that the Trade Marks (Amendment etc) (EU Exit) Regulations 2019 ‘preserves a pan-EU jurisdiction in pending proceedings which the court undoubtedly had before Brexit’.

He added that a new paragraph added to the Trade Marks Act 1994 by the 2019 regulations ‘does not limit the jurisdiction which is retained in pending proceedings’, and that it ‘confers a new power and discretion but does not limit or derogate from existing remedies’.

Section 7A of the EU Withdrawal Act 2018 has the effect that ‘Articles 4, 5 and 67 of the Withdrawal Agreement have legal effect as part of domestic law without the need for any further legislative enactment’, Flaux also said.

The defendants have been granted permission to appeal, according to Serle Court Chambers whose tenant Stephanie Wickenden appeared for the claimant.