Questions can often arise over which courts have jurisdiction to hear claims in relation to online infringement of trade marks. A recent judgment in the Court of Session, The University Court of the University of St Andrews v Student Gowns Ltd, provides some helpful guidance and reiterates the importance of thinking about the most appropriate forum when bringing or defending a claim.
The pursuer is a university based in Scotland and the defender is a company incorporated in England and Wales, having its registered office in London. The university maintains a tradition that its undergraduate students wear a red gown, which they can buy on the university website or at its campus shop.
The university became aware of the defender’s activities when a number of students complained about gowns sold by the defender. The gown was made to university specifications and used its protected signs. It was sold online, marketed using Google Ads.
The university argued that the defender was infringing the University’s UK registered trade mark and amounted to passing off. The university sought an order from the court to stop the defender from selling red gowns.
No jurisdiction in Scotland?
The defender sought to dismiss the action on the basis that Scotland was not the correct jurisdiction. They submitted that gowns were sold online and to a minority of Scottish students, the majority being elsewhere in the UK and overseas. Some gowns were delivered to English addresses.
Accordingly, they argued that the website is not specifically marketed, aimed or directed at Scottish customers. On that basis, the place of the alleged harmful event was in England, not Scotland.
The judge found that the Scottish Court did have jurisdiction to hear the dispute. In relation to passing off. The Court held that the place of damage was where the goodwill subsists and where it is protected by law. On that basis the university were entitled to sue in Scotland.
In relation to trade mark Infringement, the judge explained that since the trade mark is registered in the UK, each UK jurisdiction is a place of damage. However, it was clear to him that Scotland has a very close and strong connection with the dispute:
“I think it fair to say that the defender’s online advertising was in fact directed to a very material extent to students who would be in Scotland when they made a purchase.”
A better suited court to hear the case?
“Forum non conveniens” allows a court to decline to hear a case when another is better suited to hear it. The defender also unsuccessfully argued this point.
The court was not convinced the action had a real and substantial connection with England. The defender argued that it would be cheaper to utilise English courts but did not back that up with sufficient evidence. The defender also failed to state why it would be in the interests of justice for another court to hear the case. The Court was therefore not persuaded by the defender that England and Wales is clearly or distinctly a more appropriate forum than Scotland for this case.
Counsel for the defender was careful not to suggest that the courts in England and Wales may be better equipped to deal with IP disputes.
The Court of Session has specialist IP judges who have experience of all forms of IP disputes meaning the Court of Session just as viable an option as the courts down south. Scottish companies with a UK registered trademark should bear in mind that Scotland may be a more appropriate forum and more convenient for them and their witnesses. There may also be tactical advantages to raising an action in Scotland. For example, litigation in Scotland is often faster and Scotland may be less convenient forum for a defender.
Another clear benefit is that an interim interdict (injunction) can be applied or on a without notice basis in Scotland. This is generally not possible in England where the court will often insist that the defendant is given notice. Obtaining a Scottish interim interdict which immediately prevents infringing use can be a powerful weapon for IP rights holders.
To find out more and discuss how you can protect your intellectual assets in Scotland, please contact Andrew McWhirter or your usual Brodies contact.
On November 12, 2019