Since the end of the Brexit implementation period on 31 December 2020, i.e. the “IP Completion Day”, UK trade mark injunctions can no longer be enforced by the EU courts. Equally, EU trade mark injunctions can no longer be enforced by the UK courts. However, this is not the case when it comes to injunction proceedings that were ongoing on IP Completion Day, as two recent cases demonstrate.
High Court decision
Article 67 of the Withdrawal Agreement provided that the rules around jurisdiction and enforcement of judgments in respect of proceedings which commenced before the IP Completion Day remain unaffected by Brexit. This was confirmed in the recent High Court judgment in Easygroup v Beauty Perfectionists [2021] EWHC 3385 (Ch). In this case, the defendant, Beauty Perfectionists, challenged the UK court’s jurisdiction to grant a pan-EU injunction since the implementation period had already ended. However, the High Court ruled that it still has jurisdiction to grant pan-EU injunctions in proceedings that were pending on the IP Completion Day, such as in this case.
Dutch District Court decision
Even though this case provided some certainty on the position the UK courts follow, it was still not clear whether the EU courts would follow the same approach in granting equivalent UK injunctions. A recent judgment by the Dutch District Court of the Hague has now confirmed the same approach from an EU perspective. In Aura-Soma Products Limited v Overstag and Mensys (ECLI:NL:RBDHA:2022:941), the Dutch court ruled that Aura-Soma Products Limited was able to obtain an injunction that covers the UK by virtue of Article 67 of the Withdrawal Agreement, since the proceedings in this case commenced before the IP Completion Day.
So what?
These two cases illustrate that, in theory, parties who commenced proceedings that were pending on the IP Completion date of 31 December 2020 can still rely on the EU Trade Mark Regulation as it was when the proceedings commenced, i.e. covering both the UK and EU territories. Therefore, the UK courts can still grant pan-EU injunctions and vice versa, as long as the proceedings had started before 11pm on 31 December 2020 when the Brexit implementation period ended.
On the basis that this Court remains an EU trade mark court for the purposes of pending proceedings, the clear intention of Article 67 of the Withdrawal Agreement, which has full legal effect, is that this Court should retain the same jurisdiction under EU Regulation 2017/1001 as it had before IP completion day. (Sir Julian Flaux, Chancellor of the High Court)
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