The High Court has granted an interlocutory injunction restraining the use of a trade mark that was alleged to infringe the trade mark of a State-owned Airline Company.
Ms Justice Nuala Butler considered that the balance of justice favoured granting the injunction.
The court had to considered several issues which arose during the proceedings, including the adequacy of damages, the risk taken by the defendant in establishing a business with a similar trade mark and the delay by the plaintive to take action.
When the court applied the principal set out in Merck Sharp and Dohme Corporation v Clonmel healthcare ltd (2019) IESC 65, the court was satisfied that it was justified to grant the reliefs.
The plaintiff Aviareto Limited was a joint venture between SITA SC and the Irish government. The plaintiff became the registrar of the International Registry of Mobile Assets in Aircraft Equipment.
The registration of an interest under the Registry gave that interest importance over unregistered interests for the same equipment. This was of significance because an aircraft engine, for example, could be owned separately to the plane.
The plaintiff developed a digital system that was branded the CLOSING ROOM, which permitted pre-positioning of transactions prior to registry to secure the right sequence of interest in the Registry. It was registered in a number of countries including the EU in respect of six classes.
The defendant, Global Closing Room Ltd was established in August 2019 and began trading in May 2020. The defendant was related to AIC Title Agency LLC, a US company that used the Trade Mark AIRCRAFT CLOSING ROOM.
The plaintiff objected to the defendant’s attempt to register GLOBAL CLOSING ROOM in the EU on the grounds of its prior rights in the Trade Mark CLOSING ROOM.
In September 2020 the plaintiff took action seeking to prevent the defendant from trading under the name GLOBAL CLOSING ROOM, claiming that it infringed its EU trade marks. The plaintiff also sought an interlocutory injunction restraining the use of the Trade Mark GLOBAL CLOSING ROOM.
The defendant opposed the introductory injunction. The defendant claimed that
1) there was a prior settlement agreement between the parties allowing the defendant to use the Trade Mark GLOBAL CLOSING ROOM, and
2) the plaintiff delayed initiating proceedings which caused the defendant higher losses.
The Court was instructed to consider that the defendant should have “cleared the path” by making sure its trade mark was accepted before establishing its business.
Further the parties also disagreed on whether the balance of justice lay in granting the application on the grounds of the adequacy of damages and disruption to the plaintiff ‘s trade mark rights.
High Court proceedings
In a lengthy judgement the injunction was granted against Global Closing Room Limited by Justice Butler. It was not disputed by the defendant that there was a fair issue to be tried in the proceedings.
The court had to decide where the balance of convenience lay.
The court held that serious weight had to be attached to the fact that the plaintiff was seeking to protect its registered rights in the EU. The court stated that it should be slow to find that an award of cost would satisfactorily compensate the plaintiff for an infringement of its registered trade mark rights, even if the plaintiff could not show any actual incidents of confusion.
The court also held that damages would be a satisfactory remedy to the defendant if the plaintiffs’ proceedings did not succeed, since the damage would be mainly financial because the defendant would have to rebrand. Additionally, the court held that the defendant had taken a risk by using a similar trade mark and should have anticipated the plaintiff ‘s grievance.
Referring to the prior settlement agreement between the plaintiff and the defendant, the judge stated that the agreement allowed the defendant to use the Trade Mark AIRLINE CLOSING ROOM, but rejected the claim that the existence of the agreement allowed the defendant to believe that the plaintiff would accept the co-existence of the confusingly similar trade mark in question.
In fact, the judge stated that because of the agreement the defendant should have known that the plaintiff would take whatever action was required to protect its trade marks.
The court stated that the defendant was not obliged to “clear the park“ to secure its trade marks by registering any treatments before commencing trading but stated that “commercial common sense” should have been applied.
Finally, the court considered the submission by the defendant that the injunction should be refused because of the delay of the plaintiff to take action. The court accepted that the plaintiff was guilty of delay from Spring 2020 to September 2020. The court held that although the proceedings were slow negotiations did take place in March and July 2020. The court held also that the delay was not such that the plaintiff was not entitled to the relief being sought.
Ms Justice Butler granted the injunction restraining the use of the Trade Mark GLOBAL CLOSING .