Aldi Stores (Irl) Ltd & Aldi GmbH & Company KG v Dunnes Stores (No 2)
| Jurisdiction | Ireland |
| Judge | Mr. Justice Cregan |
| Judgment Date | 21 July 2015 |
| Neutral Citation | [2015] IEHC 551 |
| Court | High Court |
| Date | 21 July 2015 |
[2015] IEHC 551
THE HIGH COURT
BETWEEN
AND
Intellectual Property Rights – Infringement of trade mark – Art. 102 (1) of the Community Trade Mark Regulation 207/2009 – Reg. 5 of European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 – S. 71 (2) of Consumer Protection Act 2007 – Special reasons – Discretion – Comparative advertising – Damages – Quantum of damages
Facts: Following the judgment of the Court that the defendant had infringed the plaintiffs' trademark, the plaintiffs now came to the Court on two issues: whether the plaintiffs were entitled to an injunction against the defendant and whether they were entitled to proceed with the damages module of the trial.
Mr. Justice Cregan held that the plaintiffs were entitled to an injunction against the defendants. The Court allowed the damages module of trial to proceed provided that no trial date would be fixed before the Court of Appeal had made its decision on the appeal in lieu of the defendants' intent to appeal the order of the Court. The Court held that under art. 102 (1) of the Community Trade Mark Regulation 207/2009, a Community trade mark court was mandated to issue an order prohibiting further infringement even when there had been an infringement in the past. The Court held that the mere fact that there existed no future risk would not be a ground for refusal of an injunction. The Court did not find any special reasons so as to refuse the injunction. The Court observed that the plaintiff would be entitled to an injunction under the Irish Trade Marks Act, reg. 5 of the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 and s. 71 (2) of the Consumer Protection Act 2007 as desired in the public interest and lawful comparative advertising. The Court found that the acts of the defendant in engaging in unlawful comparative advertising repeatedly in all the stores in Ireland were grave and serious. The Court was of the view that a separate trial on the damages module should not take place before the appeal on liability had been decided because it would waste the time and resources of the Court if the appeal on liability was upheld
JUDGMENT of Mr. Justice Cregan delivered on the 21st day of July, 2015
1. In my first judgment In these proceedings, delivered on 9 th June 2015, I concluded that Dunnes Stores had infringed the Comparative Advertising Regulations with its comparative advertisements and, in particular, that it had infringed Regulation 4 (2) (d) Regulation 4 (2) (c) and Regulation 4 (2) (b) (and therefore also ss. 43-46 of the Consumer Protection Act 2007). I also concluded that the defendant had infringed the plaintiffs' trade marks. At the end of my judgment, I indicated that I would hear further submissions from the parties about the nature and scope of any potential remedy and the form of the order.
2. There were two issues which subsequently arose. These are:
(i) Whether the plaintiffs are entitled to an injunction against the defendant;
(ii) Whether the plaintiffs are entitled to proceed with the damages module of the trial.
3. I will deal with both of these issues in turn.
4. The plaintiffs submitted that, given the behaviour of the defendant and the terms of the court judgment, they were entitled to an injunction against the defendant. The defendant submitted that it was unnecessary, and indeed inappropriate, to grant an injunction on the facts of this case. Both parties filed detailed legal submissions in respect of this issue.
5. Article 102 (1) of the Community Trade Mark Regulation 207/2009 (the "CTM Regulation") provides as follows:
"Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order preventing the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with." (Emphasis added).
6. The High Court has been designated a Community Trade Mark Court by the Trade Marks Act, 1996 (Community Trade Marks) Regulations, 2000 ( S.I. No. 229/2000).
7. In reliance on this provision, the plaintiffs submit that they are entitled to an injunction. They submit that a significant property right of theirs - namely their trade marks - has been infringed and has been used to mislead the public. They also submitted that all complaints which they made to Dunnes Stores were ignored and that the defendant maintained its entitlement to use the plaintiffs' trade mark until the Court delivered its judgment. They also argued that the fact that the defendant's campaign had ceased in August 2013 was not a ground on which the Court should refuse an injunction restraining the defendant from infringing the marks.
8. The plaintiffs also relied on Nokia Corp v. Joacim Wardell [2006] ECR I-12083, ( Case C-316/05). In that case, the CJEU considered Article 98 of the Community Trade Mark Regulation 40/94 (the predecessor of Article 102 CTM Regulation 207/2009) and stated as follows:
a "21. It follows from the need for uniform application of Community law and from the principle of equality that the terms of a provision of Community law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see, inter alia, Case 327/82 Ekro [1984] ECR 107, paragraph 11)...
b 22. That applies to the term 'special reasons' in the first sentence of Article 98(1) of the Regulation.
c 26. It is essential, for the purposes of protecting Community trade marks, to enforce the prohibition against infringement of those marks.
d 27. If the condition relating to 'special reasons' were to be interpreted differently in the various Member States, the same circumstances could give rise to prohibitions of further infringement or threatened infringement in some Member States and not in others. Consequently, the protection afforded to Community trade marks would not be uniform throughout the entire area of the Community.
e 28 The term 'special reasons' must therefore be given a uniform interpretation within the Community legal order.
f 29 In that regard, it must be noted, firstly, that, in the different language versions, the first sentence of Article 98(1) of the Regulation is drafted in mandatory terms (see, inter alia,.... in English, 'shall ... issue an order prohibiting';
g 30. It follows that, in principle, a Community trade mark court must issue an order prohibiting further infringement or threatened infringement and, therefore, that the condition relating to 'special reasons for not doing so' - which the wording of Article 98(1) clearly shows is an exception to that obligation.....must be interpreted strictly."
h 31. Secondly, Article 98(1) of the Regulation is an essential provision for the purposes of achieving the objective pursued by the Regulation of protecting Community trade marks within the Community.
i 32 As Advocate General Sharpston pointed out at point 24 of her Opinion, if the issue of a prohibition against further infringement or threatened infringement of a Community trade mark were conditional on an obvious or not merely limited risk of recurrence of such acts, the applicant would probably be required to furnish evidence of that risk. Such evidence regarding the possible conduct of the defendant in the future would be difficult for the applicant to adduce and risk undermining the exclusive right conferred on him by the Community trade mark.
j 33. Thirdly, as was pointed out in paragraph 25 of this judgment, the protection of Community trade marks must be uniform throughout the entire area of the Community"
k "34. An interpretation according to which the issue of a prohibition against further infringement or threatened infringement of a Community trade mark was conditional on an obvious or not merely limited risk of recurrence of such acts on the part of the defendant would result in the extent of the protection of that mark varying from one court to another, indeed from one action to another, according to the assessment made of that risk.
l 35. The above considerations obviously do not preclude a Community trade mark court from not issuing such a prohibition were it to find that further infringement or threatened infringement on the part of the defendant was no longer possible. That would apply in particular if, after the commission of the acts in question, an action were brought against the proprietor of the mark infringed which culminated in a revocation of his rights.
m 36. The answer to the first question must, therefore, be that Article 98(1) of the Regulation is to be interpreted as meaning that the mere fact that the risk of further infringement or threatened infringement of a Community trade mark is not obvious or is otherwise merely limited does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts." (Emphasis added).
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