Blunting the edge of a declaration of invalidity
IPKat - IP news and fun for everyone: Last Friday Mr Justice Warren, sitting in the Chancery Division (England and Wales), gave a ruling in Rousselon Freres Et Cie v Horwood Homewares Ltd, [2008] EWHC 1660 (Ch). This was a follow-on from an earlier hearing (noted here by the IPKat) in which the same judge held that kitchen knife-maker Rousselon was entitled to invalidate Horwood’s trade marks for knifes in Class 8: both marks contained the striking name SABATIER and there was a likelihood of confusion since the dissimilarities between the parties’ respective marks were not sufficient to undo the dominant effect of their shared name.
After Warren J held that Rousselon was entitled to a declaration that Horwood’s trade marks were invalid, Horwood sought suspension of that declaration pending the outcome of its application to invalidate or revoke Rousselon’s own registered marks. The judge was asked to deal with two issues: (i) did the court have jurisdiction to suspend the making of the declaration and (ii) if so, should that discretion be exercised?
Warren J’s answers were “yes” and “yes”. He explained that the court had jurisdiction to suspend the making of a declaration of the invalidity of a trade mark not only where an appeal against that decision was pending but in other circumstances too, so long as its jurisdiction was exercised in a manner that was appropriate to a stay of execution and which did not cast aspersions on the validity of the original judgment. In global terms, a declaration of invalidity had implications that far exceeded its effect on the parties to the litigation. This was because, since a registered trade mark was a property right enforceable against the world, the effect of a declaration of invalidity was the irreversible consequence that everyone else in the world could rely…