Deputy High Court Judge Michael Tappin KC has declined to stay proceedings in a case concerning alleged infringement of unregistered designs for maternity clothing.
In a March 2024 judgment, the judge held that the claimant, Seraphine, was entitled to serve proceedings out of the jurisdiction and ordered the defendant, Mamarella, to file its defence by 24 May 2024.
However, on that date Mamarella sought a stay of the proceedings pending a decision in a parallel case in Munich. The Munich decision was expected soon after the oral hearing on 18 March 2024 but has now been delayed until at least 18 November 2024.
In a judgment published on 18 June 2024, Mr Tappin KC dismissed Mamarella’s stay application.
No stay of design dispute
Mamarella argued that a stay until after the Munich judgment was justified to avoid the parties spending time, money and effort dealing with issues of subsistence and infringement of the unregistered Community design rights in respect of four garments that were common to both the UK and German litigation (referred to as the Overlap Garments).
But Seraphine said that Mamarella ‘should not be allowed to string out these proceedings further than it has already done’ by relying on the delay in Munich and that in any case no stay was justified in respect of the other four garments in the UK dispute.
Mr Tappin KC concluded that no stay was justified and Mamarella should serve its Defence by 3 July 2024. He explained that it was clear from Mamarella’s solicitor’s witness statement that ‘as at 24 May 2024 preparations for service of that Defence were well advanced’ with over 80 pieces of potential prior art relating to the eight garments in issue identified. He added:
‘There is no reason why Mamarella should not serve its Defence in respect of the garments which are not in issue in the Munich proceedings. Further, given that Mamarella’s position is that the issues in respect of the Overlap Garments are the same as in the Munich proceedings, Mamarella must be in a position to serve its Defence in relation to those garments, as it was ready for an oral hearing in Munich in March 2024. If Mamarella wishes to advance a case that the judgment of the Munich court will give rise to a res judicata, then it should plead that case in its Defence.’
What does this mean?
The judgment provides practical guidance on when stays will be granted in multi-jurisdictional cases. In this case, the judge clearly felt that there were sufficient reasons to warrant proceedings continuing in the UK, based on factors including the nature of the dispute, the progress already made and the timing of the German proceedings.
It is a reminder that stays are not automatically granted even when the outcome of parallel proceedings is relevatn to the dispute and parties need to provide good arguments to justify them.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com