Length of OHIM proceedings is not 'special ground' not to grant stay


V2H is a Danish company which owns EU registrations for the trademark V2 and variations of this mark, mainly for Classes 34 and 35 of the Nice Classification. V2H uses the trademark for tobacco snuff and chewing tobacco products which it has produced and sold under the trademark since 2006. VMR is a US company which markets and sells e-cigarettes under the trademark V2CIGS.

In 2012 V2H became aware that VMR was selling its e-cigarettes within the European Union. It made objections and started litigation against VMR's Swedish distributor. The Swedish courts granted an injunction against the Swedish distributor in June 2013.

On August 2 2013 VMR filed objections at the Office for Harmonisation in the Internal Market (OHIM) regarding V2H's EU registrations and asked OHIM to cancel them. Following this, V2H filed for an EU-wide injunction against VMR at the Maritime and Commercial Court on October 21 2013 (Case E-1-13) and filed suit against VMR (Case V-80-13) on November 26 2013.

In the lawsuit on the merits (Case V-80-13), VMR sought a stay in the proceedings according to Article 104 of the EU Trademarks Directive (2008/95/EC). V2H objected to this, stating that there were special grounds not to grant a stay (ie, the objections that VMR had made were unfounded and, considering that a decision from OHIM could take six to seven years, this was sufficient grounds not to stay).

The court stayed the proceedings in accordance with Article 104. It ruled that the presumption is that a stay must be granted unless there are special reasons not to grant the stay. The court found in this case that the fact that the request for cancellation to OHIM was made after the conflict had arisen did not constitute special grounds. Further, the court found that the fact that the OHIM proceedings might last several years did not constitute special grounds; neither did the possibility that VMR could present identical objections before the Danish court. The court could not relate to claims that the objections which VMR had made before OHIM were unfounded.

In V2H's application for injunction (Case E-1-13), the court found that there was no reason to stay the proceedings in accordance with Article 104. Further, the court found that V2H had shown that it was probable that VMR had violated its trademark rights regarding the trademark V2, and that the goods were similar. Thus, the court granted an injunction for the entire European Union against VMR's marketing of e-cigarettes and against some of VMR's domain names containing the term 'V2'. The injunction was conditional on a bank guarantee of Dkr2,500,000. VMR was ordered to pay Dkr60,000 in costs.

Mads Marstrand-Jørgensen, NJORD Law Firm, Copenhagen

Get unlimited access to all WTR content