Do Declarations Of Non-Infringement Operate For Merchandise Grade Litigants?

The Sky's the limit?

Declarations of non-infringement or DNIs are mutual inward the patent Blue Planet whether every bit business office of a pre-emptive “clearing the way” strategy or every bit a counterclaim to alleged infringement.

But create they operate for merchandise marks?

This enquiry has been indirectly considered inward ii recent English linguistic communication cases: Karen Millen v Karen Millen Fashions Ltd and Skyscape Cloud Services Ltd v Sky Plc.

The background to both cases is different.

Skyscape supplies cloud reckoner services to organisations inside the Britain world sector. Sky, the broadcaster, barely needs an introduction. Sky alleged infringement of unopen to of its merchandise marks in addition to Skyscape offered limited undertakings inward return. Although Sky did non upshot proceedings, Skyscape opted to commence proceedings against Sky inward social club to gain “commercial certainty regarding the bear of their business” [6].

The Karen Millen dispute has a to a greater extent than complicated backstory concerning what rights were in addition to were non transferred amongst the sale of a business. One of the reasons for Karen Millen (the individual) bringing the claim was a wish to render to retail amongst a clearer agreement of the extent to which she could usage her name. As the approximate position it, “at the view of this dispute… is the hit of negative declarations sought yesteryear [Karen Millen] to constitute what she tin do, earlier she starts to trade” [255].

What's inward a name?

In other words, the wish for occupation concern certainty motivated both claimants’ decisions to convey proceedings. This wish is perfectly understandable but tin a annunciation of non-infringement going to supply the certainty required?

Unlike patents, English linguistic communication merchandise score legislation does non expressly supply for declarations of non-infringement but they are possible provided that the next principles guide keep been established:

1. The enquiry of whether to grant negative declarations is ane of discretion rather than jurisdiction.
2. The usage of negative declarations should endure scrutinised in addition to their usage rejected where it would serve no useful purpose, but where such a annunciation would help ensure that the aims of justice were achieved, the courtroom should non endure reluctant to grant a negative declaration.
3. Before a courtroom tin properly brand a negative declaration, the underlying upshot must endure sufficiently clearly defined.

The employment inward both cases was the extent to which the courtroom was willing to grant a annunciation of non-infringement was far to a greater extent than limited than was acceptable to the Claimant’s commercial objective of achieving occupation concern certainty. This was an upshot nether the 3rd regulation (i.e. is the underlying upshot clearly defined?).

My form of skyscape

In Skyscape, the asking for a annunciation was along the lines that nosotros would similar the kitchen sink but if the approximate is solely prepared to grant the tap, that volition create or every bit HHJ Hacon described it “if I was non prepared to grant the DNI sought inward full, Skyscape was willing to select whatever annunciation it could larn at to the lowest degree pending whatever appeal.”

Skyscape was asking for a DNI inward relation to each of (i) SKYSCAPE in addition to (ii) SKYSCAPE CLOUD SERVICES inward diverse fonts, colours in addition to alphabetic quality instance every bit good every bit (iii) xviii logos inward connective amongst 10 types of service in addition to the provision of services enabling transition to each of those services. Although the basic enquiry was whether it was ok for Skyscape to usage SKYSCAPE inward connective amongst cloud computing for the world sector inward the UK, at that topographic point were a lot of theoretical combinations for each nurture or logo in addition to service.

Skyscape attempted to bargain amongst these concerns yesteryear grouping the marks together in addition to identifying goods or services which Sky had highlighted every bit a item concern.  This was provided besides belatedly inward the proceedings (mid trial) to endure of usage to the courtroom but could conceivably endure an approach used yesteryear litigants inward the time to come provided that whatever such tabular array also deals amongst the enquiry of identity/similarity inward the signs every bit good in addition to the enquiry is dealt amongst earlier (or at to the lowest degree at) the instance management conference.

Another favourite skyscape

Karen Millen offers time to come litigants slightly to a greater extent than reassurance.  The judge, Richard Meade QC, noted that "I am surely at that topographic point are cases where a tike tweak to the declarations sought would endure appropriate. Possibly at that topographic point are other cases where a modest position out of discrete aspects of a negative annunciation are separately identified from an early on phase in addition to could fairly endure ruled on separately without injustice to a defendant, but that is non this case" [267].

One of the big difficulties identified yesteryear Richard Meade inward Karen Millen was that because the Claimant hadn't soundless launched her business, it was non possible to just compare the goods in addition to services.  As he position it:

"There is no disceptation most where or how [the Claimant's business] would trade, its merchandise dress, or which of the diverse marks would genuinely endure used, separately or inward combination. For example, ...[i]t seems to me that it could brand a really bully divergence to my assessment of the likelihood of confusion if the Claimant were to usage KAREN on women's clothes, and KAREN MILLEN on perfume, candles in addition to eyewear."

So, is it worth bringing proceedings for a annunciation of non-infringement?

As always, it depends on the item circumstances, in addition to at that topographic point may good endure situations where a threat of merchandise score proceedings is besides bully a guide chances for a occupation concern to drib dead along to trade.  Should a claimant determine to larn downwardly this route inward the future, these cases laissez passer on a useful indication of the extent to which a annunciation volition endure granted in addition to the prove the courtroom volition await for when making its assessment.

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