In the recent case of Regent University v Regent's University London, the Patents County Court (now the Intellectual Property Enterprise Court) stayed trade mark infringement proceedings under Article 104 of the Community Trade Mark ("CTM") Regulations. The decision follows the Court of Appeal's judgment in last year's BSkyB cases on the same Article.
This case is further proof of the tactical matters that need to be taken into account by parties – both potential claimants or defendants – when there is alleged CTM infringement because of the danger of Article 104 and its strong presumption of a stay of subsequent proceedings. The principal and overarching issue is the question of time and delay.
The lesson from these cases is to act swiftly and decisively if your CTM is under threat. Serious thought should be given to an interim injunction (if possible) or issuing a protective claim form. This would avoid any Article 104 delay.
The effect of Article 104 also seems to add value to a brand owner holding a national mark as this does not fall within the Article and therefore would avoid a stay of infringement proceedings based on the Article.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.