Following judgment in the M&S Interflora Adwords case (see our previous post here), Mr Justice Arnold has now determined a number of consequential issues, including the form of the injunction. Two
Following judgment in the M&S Interflora Adwords case (see our previous post here), Mr Justice Arnold has now determined a number of consequential issues, including the form of the injunction. Two main issues arose:
Specificity of the injunction
The conventional form of injunction to restrain trade mark infringement is a general injunction - it is not usual to specify the particular acts which are restrained. However, in this case, both of the rival draft forms of injunction specified the particular acts which were to be restrained. Interflora, when pressed, agreed to an injunction in conventional form. However, M & S resisted, claiming that general injunctions were disproportionate because they had a chilling effect: the risk of contempt of court meant that the defendant had to be very cautious when deciding how to comply with the injunction even though the res judicata effect of the underlying judgment only applied to the specific infringements proven in that judgment.
The judge recognised some force in this argument but noted a procedural solution - the availability of declaratory relief. Following consideration of specific injunctions and case law, he concluded that a general injunction would not be disproportionate or create a barrier to legitimate trade in the present case. If issues arose about the effect of differently-worded adverts to those considered at trial, they should be resolved on an application for declaratory relief.
Geographical scope of the injunction
As one of the infringed trade marks was a Community trade mark ("CTM"), Interflora sought an EU-wide injunction to restrain infringement of the CTM. In DHL Express France SAS v Chronopost SA the CJEU had ruled that a prohibition against further infringement or threatened infringement of a CTM "must, as a rule, extend to the entire area of the European Union" (albeit with exceptions). M&S had not proven that the infringing use would not affect, and was not likely affect, the functions of the CTM in Member States other than the UK. The Judge therefore concluded that the rule in DHL should apply and an EU-wide injunction was granted in respect of the CTM.
Specificity of the injunction
The conventional form of injunction to restrain trade mark infringement is a general injunction - it is not usual to specify the particular acts which are restrained. However, in this case, both of the rival draft forms of injunction specified the particular acts which were to be restrained. Interflora, when pressed, agreed to an injunction in conventional form. However, M & S resisted, claiming that general injunctions were disproportionate because they had a chilling effect: the risk of contempt of court meant that the defendant had to be very cautious when deciding how to comply with the injunction even though the res judicata effect of the underlying judgment only applied to the specific infringements proven in that judgment.
The judge recognised some force in this argument but noted a procedural solution - the availability of declaratory relief. Following consideration of specific injunctions and case law, he concluded that a general injunction would not be disproportionate or create a barrier to legitimate trade in the present case. If issues arose about the effect of differently-worded adverts to those considered at trial, they should be resolved on an application for declaratory relief.
Geographical scope of the injunction
As one of the infringed trade marks was a Community trade mark ("CTM"), Interflora sought an EU-wide injunction to restrain infringement of the CTM. In DHL Express France SAS v Chronopost SA the CJEU had ruled that a prohibition against further infringement or threatened infringement of a CTM "must, as a rule, extend to the entire area of the European Union" (albeit with exceptions). M&S had not proven that the infringing use would not affect, and was not likely affect, the functions of the CTM in Member States other than the UK. The Judge therefore concluded that the rule in DHL should apply and an EU-wide injunction was granted in respect of the CTM.