Prudential Assurance Co Ltd v Prudential Insurance Co of America
Date
12 March 2003
Legislation
Trade Marks Act 1994
Article 21 of the Brussels Convention
Art 105(2) of the Community Trade Mark Regulation
Keywords
jurisdiction; revocation of trade mark; foreign rights; conflict of laws
Counsel
Geoffrey Hobbs QC, Colin Birss, Michael Silverleaf QC, Richard Vary
Solicitors
Lovells for the Claimant; Linklaters for the Defendant
Judge
Kennedy, Potter, Chadwick LJJ
Court
Court of Appeal
Reported
[2003] EWCA Civ 327, [2003] 1 WLR 2295, [2004] FSR 25
Summary
Appeal from decision of Mr Justice Laddie made on 11 April 2002. Each of the parties had run an insurance business for over 100 years - the Claimants in the UK and Europe, and the Defendants in the USA. In 1974 the parties made arrangements to co-exist by not using each other's name or marks in the other's territory. Prudential (UK) asserted that the agreement was binding on the parties, Prudential (USA) denied that it had any legal effect.
PRU and PRUDENTIAL were both registered as community trade marks by Prudential (UK), however Prudential (USA) obtained a number of national registrations for the mark PRUMERICA across Europe. On appeal at the Cour d'Appel in Paris the registration of the USA mark has upheld despite opposition from the UK firm on the basis of its registrations.
Prudential (UK) then sought to prevent Prudential (USA) from using the marks PRUMERICA and PRUDENTIAL-BACHE in the UK and other parts of Europe on the basis that such use would breach the 1974 agreement and infringe their registered trade marks.
Prudential (USA) argued that the claim should be struck out on the basis of Article 21 of the Brussels Convention or alternatively Art 105(2) of the Community Trade Mark Regulation on the basis that the French court had already made a finding that the marks were not sufficiently similar. Laddie J. rejected this submission on the basis that Art 105 talks about an action for infringement and not registration. He did, however, give leave to appeal.
Decision
The Court of Appeal held that Art 21 of the Convention and Art 105(2) apply only where there are concurrent or simultaneous proceedings. After a detailed examination of the interrelation of the jurisdiction clauses in the Community Trade Mark regulation with the case law on the Brussels Convention it was held by the Court of Appeal that Art 105(2) was not relevant to this issue because the French Cour d'Appel was seized with an issue on the national mark PRUMERICA while the English Court was seized with the Community Trade Marks PRU and PRUDENTIAL and that the requirement of dual identity in that Article was not satisfied. Similarly Laddie J's finding that Art 105(1) applies only in cases of infringement was upheld.