Walton v Verweij [2018] EWHC 1608 (Ch)

28 June 2018

Charlotte May QC and Jaani Riordan appeared for the defendant in this trial relating to trade mark infringement and validity, and passing off. The claimants claimed that the defendant had infringed their UK and EU trade marks comprising the word GIORDANO, used in relation to clothing. The defendant denied infringement and counterclaimed for revocation and/or invalidity of the marks, and for passing off.

The parties were in dispute in several jurisdictions in Europe, including revocation proceedings before the EU Intellectual Property Office (EUIPO), which were stayed pending resolution of the instant proceedings. Shortly before trial, the claimants served a notice of discontinuance of the claim so far as it related to the EU marks. The court set aside the notice, holding it to be an abuse of process as it shielded the EU marks from a determination of validity in the instant proceedings while allowing the claimants to invoke them in further proceedings elsewhere pending EUIPO determinations.

The court held that trade mark UK297 was not invalid on the ground that the application was made in bad faith, but was invalid on the basis that the defendant had acquired goodwill in GIORDANO in relation to clothing by the filing date. The claimants were therefore also held liable for passing off. The remaining trade marks, and also UK297, were revoked for non-use and held not to be infringed in any event by reason of honest concurrent use.

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