Can UK courts grant pan-EU injunctions in proceedings began pre-Brexit ?
In short, yes: the UK courts can grant a pan-EU injunction in proceedings that were pending on 31 December 2020, the day the UK left the EU.
That was the conclusion of Sir Julian Flaux, Chancellor of the High Court, in his judgment in a dispute between Easygroup and Beauty Perfectionists (& others) over the latter’s use of the name easyCOSMETICS.
Under the EUTM Regulation, EU member states can designate national courts as EU trade mark courts. These courts have jurisdiction to grant EU-wide injunctions.
However, there was some uncertainty about whether the UK courts could grant EU-wide injunctions in cases that were pending before the end of the Brexit transition period. According to the UK IPO, there were a small number of such cases pending on 1 January 2021. Proceedings in this particular case were issued on 5 March 2020.
Uncertainty over jurisdiction
The uncertainty arose because of inconsistency between the Withdrawal Agreement, the Trade Marks Amendment etc (EU Exit) Regulations 2019 and the Explanatory Memorandum to the 2019 Regulations.
The judge described the argument that the Court is no longer an EU trade mark court as regards pending proceedings as “misconceived” and said the “clear intention” of the Withdrawal Agreement was that the Court should retain its jurisdiction under the Regulation.
The Explanatory Memorandum, which stated that jurisdiction is limited to comparable trade marks, was wrong and should be disregarded. This view was consistent with that expressed in UK IPO guidance.
The judgment provides welcome clarity and will be helpful in the small number of IP cases in which proceedings spanned the Brexit date.
Standing back, it is also a reminder that although the government has “got Brexit done”, there will likely be various questions and disputes that arise following the UK’s departure and the special rules that applied during the transition period. The courts will be called on to resolve these for many months, if not years, to come.