Glaxo Group Ltd v Glaxosmithkline (Ireland) Ltd t/a Allen & Hanburys and Another
 IEHC 368
THE HIGH COURT
2015/2537P - Barrett - High - 15/6/2015 - 2015 IEHC 368
Intellectual property rights – Community Trade Mark – Art. 104 of the Community Trade Mark Regulation – Interlocutory injunction
Facts: The plaintiffs sought an order for stay under art. 104 of the Community Trade Mark Regulation in the proceedings between the plaintiffs and the defendant.
Mr. Justice Max Barrett refused to grant an order for stay under art. 104 of the Community Trade Mark Regulation. The Court held that the language of art. 104 (1) of the said regulation is mandatory and it imposed an obligation upon the Court to grant a stay; however, it also recognizes existence of special grounds for continuing hearing. The Court held that art. 104 (1) would apply to the present proceedings and there existed special circumstances that warranted continuation of the proceedings rather than curbing it. The Court observed that any attempt by the Court to define special grounds contained the possibility of multiplicity of litigation; however, those grounds must be important and substantive.
Background. This judgment follows on the court's judgment a month ago in the plaintiffs' failed application for an interlocutory injunction. (See Glaxo Group Limited & Ors v. Rowex Ltd. (Unreported, 19 th May, 2015. High Court (Barrett J.)). This further judgment is concerned with the issue raised by the court in the interlocutory proceedings as to whether a stay should be granted pursuant to Art. 104 of the Community Trade Mark Regulation (i.e. Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark, as amended. (O.J. L78, 24. 3.2009, p.l), hereafter the "CTMR"). During the hearings that preceded this further judgment, counsel suggested that the court should only consider the Art. 104(1) dimension of matters, with any issue as to Art. 104(3) to be argued and decided in the future, if required. It was a shrewd suggestion: the court's decision below in respect of Art. 104(1) has the result that no decision will be required under Art. 104(3).
Nature of instant proceedings and previous findings. By way of general remark, the court notes that its hearing of counsel in respect of the Art. 104(1) issue was not, and was never intended as, an opportunity to place additional material before the court for the purpose of contesting any findings that are contained in the court's judgment of 19 th May. It is perhaps worth recalling in this regard that in that judgment the court determined on the basis of the evidence that was before it that (a) damages are an adequate remedy for Glaxo, (b) damages are not an adequate remedy for Rowex, and (c) the status quo ante favours Rowex. In its consideration of the status quo ante, the court had especial regard to the fact that Glaxo, in seeking the interlocutory injunction was effectively asking the court to impose an interlocutory injunction that would set Ireland apart from much of the rest of Europe as regards free trade in AirFluSal, and free trade between it and Seretide in their respective purple liveries.
Article 104. Article 104 of the CTMR provides as follows:
2 "1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.
2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.
3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay."
The mandatory and the permissive. The language of Art. 104(1) is mandatory. It uses the word "shall". in relation to the grant of a stay and the only derogation it contemplates is the existence of "special grounds for continuing the hearing". This is so obvious from the wording that the court scarcely requires the 'security blanket' of precedent to support its observations in this regard. Even so, the court notes that in the decision of the English High Court in Guccio Gucci SpA v. Shipton & Heneage Ltd.  EWHC 1739 (Ch.), Lewison J., at para.16 of his judgment, notes the mandatory nature of the language in Art. 104(1) as follows:
"The presumption in Article 104 is that the CTM will stay its proceedings where there is an application on foot in OHIM. This is clear from the mandatory language of the paragraph which says the court 'shall' stay its proceedings. The only circumstance in which it may decline stays is if there are 'special' grounds."
In Starbucks (UK) Ltd. v. British Sky Broadcasting Group plc  EWHC 1842 (Ch.), a case in which a stay was not granted, Arnold J. identified the following basic propositions in respect of Article 104:
"Certain matters are common ground. First, the purpose of Article 104 is to avoid multiplicity of proceedings and inconsistent decisions. Secondly, where Article 104(1) applies, the national court must stay proceedings relating to a Community trade mark unless there are special grounds. Thirdly, the concept of special grounds must be given a uniform and autonomous interpretation as a matter of European law. Fourthly, the special grounds must relate to factual circumstances specific to the given case: see by way of analogy, Case C-316/05 Nokia Corp v Joacim Wärdell  ECR I-12083 at ."
By contrast, the use of the word "may" in Art. 104(3) is merely permissive as regards the grant of "provisional and protective measures for the duration of the stay". As mentioned above, the court's conclusions as to what ought to happen pursuant to Art. 104(1) mean that it is not required to consider Art. 104(3) at any length in the within judgment.
There is no Irish case-law on Art. 104. However, the courts of England and Wales have had occasion to consider the provision. It seems to the court that the below-mentioned principles can be gleaned from the case-law of our neighbouring jurisdiction and usefully applied in this jurisdiction also.
First, it appears to be accepted by the courts of England and Wales (see, for example, the decision of the Court of Appeal in Starbucks, at para.37) that the concept of "special grounds" should be given an autonomous European Union-wide meaning and that, by analogy with Article 102 of the CTMR and the decision of the Court of Justice in Nokia Corporation v. Wärdell  1 CMLR 37, the special grounds should relate to the factual circumstances of each case.
Second, the presumption as regards granting a stay is a "strong one". Lewison J.'s observations in this regard in Guccio Gucci, at para. 18, seem to the court to be worthy of especial mention. Per Lewison J:
"In the [then] only case to have considered Article 104 Kitfix Swallow Group v. Great Gizmos Limited  FSR 9, Mann J. said the presumption in favour of a stay in Article 104 was a strong one. I agree. This differs from the EPC which did not make any provision for the stay of national proceedings. Thus, the starting point for the exercise of a discretion in the present case is very different. Unlike the EPC [European Patent Convention], the CTMR has consciously tried to avoid conflict and duplication. The general principle is that the court first seised decides the dispute on the merits and any other court defers to that court. This applies even where the first court seised is dealing with a national trade mark court as opposed to a CTM. So the general principle is that the first in time prevails."
In a case where there is potential duplication between a CTM court and OHIM the same principle applies in the absence of special reasons, that is to say, special factual circumstances peculiar to the individual case. 'Special' to my mind connotes something out-of the ordinary run of cases. The fact that the CTMR specifically contemplates a stay where there are concurrent proceedings relating both to a CTM and a national trade mark, indicates to my mind that the mere fact that there are concurrent claims cannot be regarded as a special reason. In my judgment, the same must be true where there is a passing off claim tacked on which arises out of...
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