High Court blunts the edge of declaration of invalidity

United Kingdom
In Rousselon Frères et Cie v Horwood Homewares Ltd ([2008] EWHC 1660 (Ch), July 18 2008), the Chancery Division of the High Court of England and Wales has exercised its discretion by suspending a declaration of invalidity of Horwood Homewares Ltd's knife trademarks pending the resolution of Horwood’s applications to invalidate or revoke knife maker Rousselon Frères et Cie’s marks.   
In an earlier hearing, the court had held that Rousselon, the owner of the trademarks PROFESSIONAL SABATIER, LION SABATIER and SABATIER, was entitled to invalidate Horwood's trademarks JUDGE SABATIER and STELLAR SABATIER for knifes in Class 8 of the Nice Classification. The court found that there was a likelihood of confusion since the dissimilarities between the parties' respective marks were insufficient to undo the dominant effect of the common element ‘Sabatier’ (for further details please see “Parties cross swords over knife marks”).

After the court held that Rousselon was entitled to a declaration of invalidity of Horwood's trademarks, Horwood sought the suspension of that declaration pending the outcome of its application to invalidate or revoke Rousselon's own registered marks. The court considered the following issues:
  • whether it had jurisdiction to suspend the making of the declaration; and
  • if so, whether that discretion should be exercised.
The court answered positively to both questions. The court held that it had jurisdiction to suspend the making of a declaration of invalidity of the trademarks not only where an appeal against that decision was pending, but also in other circumstances, so long as its jurisdiction was exercised in a manner which:
  • was appropriate to a stay of execution; and
  • did not cast aspersions on the validity of the original judgment.
In global terms, a declaration of invalidity has implications that far exceed its effect on the parties to the litigation. Since a registered trademark is a property right enforceable against the world, the effect of a declaration of invalidity has the irreversible consequence that everyone else can rely on it. It was not disputed that pending orders for revocation and declarations of invalidity are often suspended pending an appeal. Consequently, the court clearly had jurisdiction to suspend its order - and there was no reason to doubt that the same jurisdiction was available in other circumstances. On the facts, the court thus concluded that jurisdiction to suspend the declaration was appropriate in this case.

Arguably, it is regrettable that such a dispute has had to go through one battle before the Hearing Office and two High Court hearings in order to reach a stage at which it is still necessary to determine whether the trademarks of the applicant for a declaration of invalidity are themselves invalid. One can conjecture that, when a dispute first arises before the Trademarks Registry, it is more difficult to impose a case management structure than is the case for disputes which are initiated at High Court level.
Jeremy Phillips, IP consultant to Olswang, London

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