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3 January 2018Trademarks

English court rules on Black & Decker jurisdiction suit

The English High Court handed down a decision in late December concerning jurisdiction and injunctions in a dispute between US manufacturer Black & Decker and a Netherlands-based company.

On December 21, Mr Justice Arnold ruled that the court did have jurisdiction to hear the case and said that an injunction was unnecessary.

Black & Decker applied in October last year for an interim injunction to stop Dvize, a manufacturer of garden tools, from using the EU trademark (EUTM) ‘Black + Decker’ (number 12,786,323) and an EU device mark (number 12,788,352).

Dvize, which is incorporated in the Netherlands, responded by filing a notice in November that challenged the jurisdiction of the English court, one of two issues that the court had to decide.

Under a manufacturing and distribution agreement, Dvize was licensed to use the trademarks until December 31, 2016.

Dvize argued that the parties entered into a replacement agreement on May 25, 2016 (the Maryland agreement), under which Dvize was entitled to use the marks until December 31, 2021.

It argued in the alternative that Black & Decker was stopped from denying the existence of such an agreement.

Black & Decker disputed both arguments, claiming that it had terminated the consent to use the marks from October 2017.

“Accordingly, it is common ground that Dvize’s entitlement to use the trademarks at least from after December 31, 2017, and possibly from after October 9, 2017, depends on whether the Maryland agreement was concluded or Black & Decker is estopped,” said Mr Justice Arnold.

On the jurisdiction issue, Dvize said that before the judgment was handed down it would not use the trademarks in the UK until the conclusion of the trial if the court found that it has jurisdiction over Black & Decker’s claim.

Quoting Bols Distilleries v Superior Yacht Services, Arnold explained that the relevant standard of proof of the jurisdictional requirements that article 125(5) of the EUTM regulation (2017/1001) imposes is that of a “good arguable case”.

Under article 125(5), proceedings can be brought in the courts of a member state in which the act of infringement has been committed or threatened.

On the facts, the English court found that there was a good arguable case that Dvize threatens to use the trademarks in the UK so that the court has jurisdiction to hear the case.

Arnold added that Dvize’s undertaking not to use the trademarks until the trial had been concluded made it unnecessary for him to consider the merits of the injunction application.

However, Arnold noted that if the court did lack jurisdiction, he would grant an interim injunction.

In December, WIPR reported that Black & Decker had settled a patent quarrel over robot vacuum products.

Technology company iRobot, the maker of the Roomba line of robot vacuum products, had accused Black & Decker of patent infringement back in April.

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More on this story

Patents
20 December 2017   US-based technology company iRobot Corporation has settled its patent quarrel with US manufacturer Black & Decker.
Patents
19 April 2017   US-based technology company iRobot Corporation has sued vacuum cleaner business Hoover and Black & Decker in two separate patent infringement lawsuits.