Arnold J held that the Court had jurisdiction in respect of BDC's claim for trade mark infringement by Dvize in the UK.
BDC licensed the well-known BLACK + DECKER and STANLEY trade marks (registered in the EU, the "Marks") to third parties on behalf of its parent company which was a supplier of industrial and domestic tools. Dvize was a Dutch manufacturer and distributor of garden tools. Dvize was licensed by BDC to use the Marks pursuant to a manufacturing and distribution agreement which expired at the end of 2016. Dvize contended that the parties entered into a replacement agreement in May 2016 under which it was licensed to use the Marks until the end of 2021. BDC denied that a replacement agreement had been entered into and contended that it unilaterally granted Dvize consent to use the Marks until the end of 2017 unless terminated earlier, and that it terminated that consent with effect from October 2016. BDC applied to the Court for an interim injunction to restrain Dvize from using the Marks in the UK until the conclusion of the trial, and Dvize applied to the Court to challenge its jurisdiction to try BDC's claim.
BDC contended that the Court had jurisdiction under Article 125(5) (which conferred jurisdiction in respect of acts committed or threatened within the UK). It was common ground that the relevant standard of proof was that of a "good arguable case". Applying the test for what amounted to a "threat" as stated by Birss J in Merck Sharpe Dohme Corp v Teva Pharma BV  EWHC 1958 (Pat), Arnold J concluded that there was a good arguable case that Dvize threatened to use the Marks in the UK. This was in particular because: (i) Dvize's case positively asserted that it was entitled to use the Marks throughout the EU, including the UK; (ii) Dvize had agreed through inter-solicitor correspondence that it would undertake not to sell any products using the Marks in the UK until the end of trial in the event that the Court decided it had jurisdiction; and (iii) a witness statement served on behalf of Dvize stated that "even if only a UK wide injunction is granted, it is likely to cause significant damage to the Defendant's reputation and to its business".
As Dvize had offered an undertaking not to use the Marks in the UK until the conclusion of trial in the event that the Court concluded that it had jurisdiction over BDC's claim on the merits, it was not necessary for Arnold J to consider the merits of BDC's application for an interim injunction. However, he went on to say that he would have granted an interim injunction had it been necessary for him to consider the issue.