A recent decision of the High Court, in which William Fry acted for the Plaintiffs, sets out for the first time the Irish court’s position regarding whether community trade mark (CTM) proceedings should be stayed pursuant to Article 104 of the Community Trade Mark Regulation (CTMR).

Article 104 deals with a situation where a CTM court (in Ireland, the High Court) is hearing an infringement or validity action in relation to a CTM and:

  • The validity of the CTM is already being litigated before another CTM court, or
  • An application for revocation/invalidity of the CTM has been filed at OHIM (the Community trade marks office)

In such circumstances, the first mentioned CTM court must, unless there are special grounds for continuing the hearing, stay the proceedings. A stay of proceedings halts further legal process in the court case until subsequently lifted.

In this case, invalidity and revocation applications in relation to the CTM in question were already underway before both OHIM and the Hamburg District Court.

Given the mandatory nature of the wording in Article 104 requiring that a stay be put in place unless special grounds for continuing the hearing existed, the High Court, of its own volition, ordered a hearing on the matter. Neither the Plaintiff nor the Defendant had requested that a stay be granted.

It was accepted by the Court that the presumption in favour of a stay was a strong one. However, on the facts of the case, the Court considered that there were at least five reasons, each of varying strength but cumulatively of considerable strength, as to why a stay should not be granted:

  • Neither party to the proceedings had sought a stay.
  • The proceedings already commenced before OHIM and the German courts could last many years before ultimately being determined.
  • The Plaintiffs had a claim of passing off (a remedy which can be used to enforce unregistered trade mark rights) and so the proceedings were not exclusively related to the CTM.
  • A speedy resolution of the issues at hand was warranted given the nature of the case.
  • Whilst the Court did not consider it necessary to rule on whether the delays before OHIM were a breach of the Charter of Fundamental Rights of the European Union and/or the European Convention on Human Rights, it did note that such breaches were of some gravity in considering whether to stay proceedings.