Last Thursday I had the pleasure of attending our flagship event for brand owners, Brand Academy 2019, with this year’s topic focusing on intellectual property litigation from a pan-European perspective. We were pleased to welcome four leading IP lawyers to participate in a panel discussion and cover essential topics such as jurisdiction selection, available relief and many practical considerations.
Here are a few key takeaways from the evening, and for a more detailed roundup click here.
- Simon Chapman- Head of Dispute Resolution at Lewis Silkin - mentioned that after Brexit it will no longer be possible to litigate in the UK for pan-European relief.
- Simon also noted that if the claimant makes the infringer aware of their intent to bring proceedings, the respondent could then file an invalidity claim against the claimant’s EU trademark. This would stay proceedings, potentially for an extended period of time. However, in the UK it is possible to pre-emptively file a protective claim which will prevent this ‘torpedo’ from the respondent.
- Caroline Bouvier from Bernard-Hertz-Béjot spoke.
- A claim for trademark infringement can only be brought in France if one has not been brought elsewhere, and only in respect of infringing acts committed or threatened to be committed in France.
- A claim for unfair competition can be brought in France, irrespective of an action brought elsewhere in the EU for EU trademark infringement.
- Dr. Søren Pietzcker of Heuking Kühn Lüer Wojtek spoke.
- If an action for a pan-European injunction is brought, it is then on the infringer to demonstrate the EU countries in which they were not carrying out infringing activities. The court will then remove these countries from the territorial scope of the injunction which will decrease the applicable fees accordingly.
- There is an urgency requirement in applying for an interim injunction, in that the applicant must file within 4-6 weeks of becoming aware of the infringing activity.
- Ignacio Temiño Ceniceros of Abril Abogados spoke.
- The EUIPO courts are based in Alicante, and tend to be very pro-owner which could benefit the claimant.
- An applicant must pay money into court by way of a bank warranty when filing for an interim injunction. This can be prohibitively high if a pan-European injunction is sought.