Do Declarations Of Non-Infringement Live For Merchandise Score Litigants?

The Sky's the limit?

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

But produce they run for merchandise marks?

This enquiry has been indirectly considered inward 2 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 estimator services to organisations inside the Britain world sector. Sky, the broadcaster, barely needs an introduction. Sky alleged infringement of closed to of its merchandise marks as well as Skyscape offered limited undertakings inward return. Although Sky did non outcome 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 as well as 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 work her name. As the gauge position it, “at the pump of this dispute… is the make of negative declarations sought past times [Karen Millen] to found what she tin sack do, earlier she starts to trade” [255].

What's inward a name?

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

Unlike patents, English linguistic communication merchandise grade legislation does non expressly render for declarations of non-infringement but they are possible provided that the next principles receive got been established:

The enquiry of whether to grant negative declarations is ane of discretion rather than jurisdiction.
The work of negative declarations should endure scrutinised as well as their work rejected where it would serve no useful purpose, but where such a annunciation would aid ensure that the aims of justice were achieved, the courtroom should non endure reluctant to grant a negative declaration.
Before a courtroom tin sack properly brand a negative declaration, the underlying outcome must endure sufficiently clearly defined.

The job 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 concern certainty. This was an outcome nether the 3rd regulation (i.e. is the underlying outcome 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 gauge is solely prepared to grant the tap, that volition produce or every bit HHJ Hacon described it “if I was non prepared to grant the DNI sought inward full, Skyscape was willing to pick out whatever annunciation it could teach at to the lowest degree pending whatsoever appeal.”

Skyscape was asking for a DNI inward relation to each of (i) SKYSCAPE as well as (ii) SKYSCAPE CLOUD SERVICES inward diverse fonts, colours as well as missive of the alphabet representative every bit good every bit (iii) xviii logos inward connectedness amongst 10 types of service as well as the provision of services enabling transition to each of those services. Although the basic enquiry was whether it was ok for Skyscape to work SKYSCAPE inward connectedness amongst cloud computing for the world sector inward the UK, in that place were a lot of theoretical combinations for each get upwardly or logo as well as service.

Skyscape attempted to bargain amongst these concerns past times grouping the marks together as well as identifying goods or services which Sky had highlighted every bit a item concern. This was provided also belatedly inward the proceedings (mid trial) to endure of work to the courtroom but could conceivably endure an approach used past times litigants inward the hereafter provided that whatsoever such tabular array also deals amongst the enquiry of identity/similarity inward the signs every bit good as well as the enquiry is dealt amongst earlier (or at to the lowest degree at) the representative administration conference.

Another favourite skyscape

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

One of the big difficulties identified past times Richard Meade inward Karen Millen was that because the Claimant hadn't even then launched her business, it was non possible to just compare the goods as well as services. As he position it:

"There is no contention 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 rattling cracking departure to my assessment of the likelihood of confusion if the Claimant were to work KAREN on women's clothes, and KAREN MILLEN on perfume, candles as well as eyewear."

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

As always, it depends on the item circumstances, as well as in that place may good endure situations where a threat of merchandise grade proceedings is also cracking a lead chances for a concern to buy the farm along to trade. Should a claimant create upwardly one's heed to teach downward this route inward the future, these cases hand a useful indication of the extent to which a annunciation volition endure granted as well as the show the courtroom volition await for when making its assessment.