![]() |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
England and Wales High Court (Chancery Division) Decisions |
||
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Jules Rimet Cup Ltd v The Football Association Ltd [2006] EWHC 2415 (Ch) (11 August 2006) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2006/2415.html Cite as: [2006] EWHC 2415 (Ch) |
[New search] [Printable RTF version] [Help]
CHANCERY DIVISION
Royal Courts of Justice |
||
B e f o r e :
____________________
JULES RIMET CUP LTD. | Claimant | |
- and - | ||
THE FOOTBALL ASSOCIATION LTD. | Defendant |
____________________
Official Shorthand Writers and Tape Transcribers
Quality House, Quality Court, Chancery Lane, London WC2A 1HP
Tel: 020 7831 5627 Fax: 020 7831 7737
Miss L. Lane (instructed by Addleshaw Goddard) appeared on behalf of the Defendant.
____________________
Crown Copyright ©
MR. JUSTICE MANN:
(1) The issues arising in relation to the opposition to the mark (that is to say, the copyright and passing off issues) have to be decided somewhere.
(2) The Trade Mark Registry is certainly a possible forum. What is ultimately at stake here is the registration of the trade mark.
(3) However, looking at the nature of the dispute, the real dispute between the parties is a copyright and passing off dispute. The nature of that dispute is that it is not such as one would expect the Trade Mark Registry to conduct in the normal run of things. It involves running a full action on the point, and while intending no disrespect whatever to the experienced Trade Mark Registry hearing officers, it is not the sort of dispute or level of dispute which they are so experienced in conducting. It is, in my view, the sort of dispute which is more appropriately resolved by a judge in High Court proceedings. Mr. Cuddigan suggested that the copyright dispute was straightforward. He said that cross-examination in it would be relatively short. It would be basically one question: did you copy? I think, with respect to him, that is a completely unrealistic view as to how a proper conduct of the copyright action would go. There would be more than one question, and it cannot be expected that the answer to that question would be accepted. I give that as merely one example of how Mr. Cuddigan seeks to over-simplify the issues that arise in relation to his original case, that the Trade Mark Registry was the appropriate venue. The resolution of that copyright dispute, and the passing off dispute, is likely to involve an investigation in terms of disclosure and witnesses which is meat and drink to this Division, but much less so to the Trade Mark Registry. That makes this court the more natural and, in my view, the more appropriate forum. It is actually the only forum appropriate to determine the common law aspects of the dispute. But it is true that were it necessary or appropriate to do so, those aspects could be left on one side while the IP aspects are sorted out, whether in this court or the Trade Mark Registry. Mr. Cuddigan accepted that if he failed on the IP aspects, then the common law claims would fall away anyway.
(4) The other factors relied on do not point away from that conclusion. I am not convinced that this dispute, if conducted properly in the Trade Mark Registry, would be cheaper, but even if and to the extent that that is true, that is probably because the resolution would be achieved less satisfactorily. The non-availability of adverse costs orders in the Trade Mark Registry points in favour of the High Court proceedings if it points anywhere. I agree with Miss Lane that there is no reason in principle why protection from such an order is a reason for favouring the protecting tribunal. Nor is the availability (and I stress the word "availability") of a useful and strong security for costs order a reason in this case for favouring one tribunal over another. The timing question is neutral. If there is a difference in the potential trial dates for the hearing of the dispute, it is only a few months at most, and probably less. That is not significant in the context of this case. It might have been urgent last year in the light of the proximity to the World Cup, but that factor has gone now that the World Cup is over.