On 18 July 2008, the English High Court handed down its decision in Rousselon Freres et cie v Horwood Homewares Ltd [2008] EWHC 1660 (Ch). This was the sequel to an earlier decision of Mr Justice Warren granting Rousselon Freres, the manufacturer of the world famous Sabatier knives, a declaration of invalidity against two UK trade marks registered to Horwood Homewares for knives in Class 8.

In the earlier decision, the Horwood marks JUDGE SABATIER and STELLAR SABATIER were deemed by Warren J to create a likelihood of confusion with the numerous Rousselon SABATIER marks. In the subsequent hearing on 22 May 2008, Horwood sought suspension of the declaration of invalidity pending the outcome of its own application before the UK Intellectual Property Office (UK-IPO) to invalidate or revoke Rousselon's registered SABATIER marks. At the original hearing, Warren J was asked to decide whether, in fact, the court had jurisdiction to suspend the declaration and, if so, whether the court should actually exercise that discretion.

CURRENT APPLICATION

Rousselon was clearly entitled to declaratory relie f to reflect Warren’s judgment; that is to say, to a declaration that Horwood's marks were invalid so far as concerns Class 8. Horwood accepted that there was no general discretion to refuse a declaration, notwithstanding the use of the word "may" in Section 47(1) of the Trade Marks Act 1994. Nonetheless, Horwood sought suspension of the declaration pending decisions on Horwood’s application to invalidate or revoke Rousselon’s trade marks. Rousselon countered by arguing that, although under CPR Part 52 the court may have the power to grant a stay, or at least what amounts to a stay (for instance by delaying the grant of the declaration), of the court’s decision pending appeal, the court had no other power to suspend the effect of its decision and, in particular, it had no power to do so pending Horwood’s invalidity/revocation applications. If wrong on that score, Rousselon argued that Warren J should decline to exercise that power. Horwood naturally argued that the court does have such a power and that it should be exercised by suspending the effect of the declaratory relief.

DECISION

Rousselon further argued that a court should not strain to find a jurisdiction to suspend the declaration in order to dig Horwood out of hole which it had dug for itself. According to Warren J, that may indeed be the case, but equally, if he found such jurisdiction to exist without any strain, he should not decline to do so simply because Horwood might have been able to protect its position in a different way. If relevant at all, that would go only to the exercise of the discretion permitted under CPR Part 52 concerning judicial stays.

The judge then explained that the court had jurisdiction to suspend the making of a declaration of the invalidity of a trade mark, not only where an appeal against that decision was pending but in other circumstances too. This applies as long as its jurisdiction was exercised in a manner that was appropriate to a stay of execution and which did not cast aspersions on the validity of the original judgment. In global terms, a declaration of invalidity had implications that far exceeded its effect on the parties to the litigation. A registered trade mark is a propertyright enforceable against the world. A declaration of invalidity would result in an appropriate entry being made in the register, which could be relied on by everyone and was effectively regarded as irreversible. It was not disputed that, pending an appeal, orders for revocation and declarations of invalidity were often suspended and there was jurisdiction to do so in this case.