Fate of PRUMERICA not assured by decision of French court

United Kingdom

In Prudential Assurance Co Ltd v Prudential Assurance Company of America, the Court of Appeal has ruled that a prior decision of a French court allowing the registration of Prudential Assurance Company of America's (US Prudential) PRUMERICA mark in France does not prevent Prudential Assurance Co Ltd (UK Prudential) from pursuing a claim in the UK courts that PRUMERICA infringes its PRU and PRUDENTIAL Community and UK trademark registrations.

UK Prudential filed a complaint in the UK courts, arguing that, among other things, US Prudential's use of PRUMERICA in Europe infringed its Community and UK trademark registrations for PRU and PRUDENTIAL. US Prudential applied to strike out the claim, contending that an earlier decision of the French Court of Appeal, allowing the registration of PRUMERICA in France, is binding in all states that are signatories to the Brussels Convention, and that no other infringement proceedings can be brought in these states because of that ruling. The High Court rejected US Prudential's arguments and it appealed to the Court of Appeal.

The appellate court refused US Prudential's appeal. It noted that Article 105 of the Community Trademark Regulation may require a court to cede jurisdiction or reject a claim where the same parties are involved in simultaneous or successive infringement actions, in which the same cause of action is at issue. However, the court stated that Article 105 did not apply in the case at hand because the marks on the basis of which the two courts were seized were not identical. It held that the French court's decision was founded or seized on the national trademark PRUMERICA, whereas any ruling by the UK courts would be seized on the Community trademarks PRU and PRUDENTIAL. Therefore, the requirement of dual identity in Article 105 had not been met.

The Court of Appeal also considered whether the Brussels Convention, and in particular Article 26 thereof, affects the UK proceedings. It stated that the question to answer was:

"Does Article 26 require a court in State A [in this case the United Kingdom] to dismiss proceedings for infringement of a national trademark registered in State A, where the infringement alleged is the use in State A of a similar mark which has been registered as a national trademark in State B [in this case France], in circumstances where there has been a judgment of a court in State B rejecting opposition to the registration of that mark on the grounds that the similarity of the two marks is not confusing."

The Court of Appeal held that the answer is no where the court in State A is seized on the validity of its own national trademark registration. However, it noted that where the validity of the national mark is not at issue before the court in State A, the answer is much less clear. It further stated that if, in such a case, the court in State A is required to dismiss the proceedings for infringement of its own national marks, it may also be required to dismiss proceedings for infringement of any Community trademarks. However, as the Court of Appeal had not heard arguments on the Article 26 issue, it did not feel it appropriate to make a ruling on this matter, nor did it feel it necessary to refer the question to the European Court of Justice at this stage.

Peter Bolger, LK Shields Solicitors, Dublin

Unlock unlimited access to all WTR content