An action against a London based company accused of trade mark and passing off infringements in relation to the distinctive red gowns worn by undergraduates at St Andrews University was properly brought in Scotland, a Court of Session judge has ruled.
Lord Doherty in the Outer House repelled pleas of no jurisdiction and forum non conveniens by Student Gowns Ltd, defenders in an action by the University Court of St Andrews arising out of the sale of gowns by the defenders to students at St Andrews University.
The pursuers averred that in 2018 the defenders began marketing a purported version of a St Andrews gown said to be made to university specifications, on its website and on Google and Amazon, using protected signs; and that the defenders' employees also came to the university to market and sell the gowns. This infringed the pursuers' trade mark and caused confusion among students, such that the defenders' goods were passed off as the pursuers' and the pursuers lost sales. The defenders' gowns were said to be of inferior quality.
A preliminary proof took place on the defenders' above pleas. The defenders stated that they faced similar proceedings by another company in England, which it was anticipated would be brought in the dedicated IP Court, where cases were dealt with quickly and subject to capped costs. The defenders wished to bring claims in response, including against the pursuers, for anti-competitive behaviour under the Competition Act 1988. As a result of the action in Scotland, they were “faced with the additional expense of fighting for fair access to the UK national academic dress market in two different jurisdictions”, which they “could ill afford”.
The defenders argued that the court did not have jurisdiction to try those parts of the claim that related to online use of the pursuers' marks. Although the pursuers relied on sched 4, rule 3(c) to the Civil Jurisdiction and Judgments Act 1982 (“courts for the place where the harmful event occurred”), the trade mark was a UK trade mark and as between the UK jurisdictions, the place of the event was England.
In any event the court should decline jurisdiction on the ground of forum non conveniens. The relevant activities of the defenders all took place in London, and the “core infringing acts” the pursuers sought to interdict took place in England. The defenders had no presence in or connection with Scotland. They intended to bring proceedings in the Competition Appeal Tribunal and to apply to have the claims against the different companies involved heard together.
Giving his decision repelling the defenders' pleas, Lord Doherty said that under rule 3(c) it was “well established that a pursuer has the option of founding upon either the place of the damage or the place of the event giving rise to the damage”. It was not for the court to decide which of the two options was preferable.
In relation to the passing off claim, the pursuers were entitled to found on the place of the damage being Scotland. “The goodwill which the pursuer claims is being injured by passing off subsists in Scotland and it is protected by the Scots common law relating to passing off.”
As for the trade mark claim, “Since the trade mark is registered in the United Kingdom, each of the United Kingdom jurisdictions is a place of the damage. Accordingly, the pursuer is entitled to found jurisdiction upon Scotland as it is a place of the damage.” In addition, “it is very clear that in the present case Scotland has a very close and strong connection with the dispute”.
Regarding the plea of forum non conveniens, the subject matter of the action had a very real and substantial connection with Scotland, and “While the defender does not have a place of business in Scotland, I consider that on a proper analysis the defender has carried on and continues to carry on business here.”
It was a neutral factor that the defenders were based in London, as one party's witnesses would have to travel to court either way. Courts in both jurisdictions were well equipped to deal with such actions. No proceedings had yet been commenced in England, and it had not been shown that there would be a significant overlap if they were.