N2-9. EU law after Brexit

- CJEU decision unpersuasive because it contained no supporting analysis and was an isolated decision unlikely to have been widely relied on

"[83] Where I think that counsel for the Defendants was on stronger ground was in his submission that Budvar was unpersuasive because neither the Advocate General's Opinion nor the Court's judgment contained any analysis of the issue, but simply stated a bald conclusion. Furthermore, they do not appear to have had the benefit either of receiving any arguments on this point or of considering the reasoning in Ghibli. Still less did they review the considerations discussed in Combe and above.
[84] Furthermore, Budvar is an isolated judgment. Even the reasoned order in I Marchi Italiani, while restating the fourth condition identified in Budvar, is not entirely consistent with it. Thus the present case is very different to Warner Music UK Ltd v TuneIn Inc [2021] EWCA Civ 441, [2021] Bus LR 1119, where the Court of Justice had developed its jurisprudence on the issue of communication to the public of copyright works over the course of no less than 25 judgments, including three Grand Chamber judgments, and had far greater experience of the issue than this Court.
[85] I also think that it is significant that the case law of the General Court and the practice of EUIPO both appear to be at variance with Budvar. While it would be presumptuous for this Court to try to predict what the Court of Justice would decide if this issue came before it, there is at least a real possibility that it would endorse the approach of EUIPO and the General Court and depart from its previous decision.
[86] This is also relevant to the question of legal certainty. One of the main reasons why the Supreme Court is cautious about departing from its own precedents is that doing so risks undermining legal certainty. In the present case, however, this consideration is of little weight. Few trade mark proprietors are likely to have based their commercial strategies on this aspect of Budvar. Moreover, a well-advised trade mark proprietor would be aware that EUIPO and the General Court have taken a different approach and that the Court of Justice might depart from Budvar.

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[89] Accordingly, I conclude that this Court should depart from Budvar to the extent of holding that the five year period starts to run when the proprietor of the earlier trade mark becomes aware of the use of the later trade mark and the later trade mark is in fact registered, whether or not the proprietor of the earlier trade mark is aware of the registration of the later trade mark." (Industrial Cleaning Equipment (Southampton) Limited v. Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWCA Civ 1451, Arnold LJ)

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More cautious approach emphasising inconsistency with other cases

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"[121] Arnold LJ points out that neither the Advocate General nor the Court in Budvar provides any analysis of the position, simply stating a bald conclusion. This is true. But I think it is possible to discern the reasoning. Both the Advocate General in her Opinion (at [74]) and the Court in its Judgment (at [53]) say in terms that it is "the wording of Art 9(1) of the Directive" which shows, or from which it is apparent, that the four conditions must be satisfied. The relevant wording is set out in the judgment of Arnold LJ at paragraph 67 above. In Article 9(1) of Directive 89/104, the relevant words are "has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use". Since the proprietor of the earlier right must be "aware of such use", the question is what "such use" means. Does it mean only that he must be aware of the use of a mark which is in fact registered in that Member State, or does it mean that he must be aware of the fact that what was being used was a mark registered in that Member State? Purely as a matter of language the latter is a perfectly tenable reading. Indeed to my mind it might be thought to be the more natural one, or in other words that the relevant question to ask the proprietor of the earlier right is "Were you aware that a registered trade mark was being used?".
[122] In those circumstances I think it doubtful whether the mere fact that a different reading was tenable and might seem preferable would have been sufficient to justify departing from the Court of Justice's interpretation. It is not enough that a subsequent court simply comes to a different view on a question from an earlier court. But as Arnold LJ's masterly analysis convincingly shows, not only is there an alternative reading available, but there does appear to be a divergence (surprising as this may seem to our eyes) between on the one hand the approach adopted by the OHIM/EUIPO and the General Court in Ghibli and later cases, and on the other the position of the Court of Justice in Budvar which suggests that the question is not regarded as settled at European level; and the wider context, the objectives of the legislation and practical considerations all suggest that the better view is that the proprietor of the earlier right need only be aware of the use of the later mark, not of the fact of its registration. In those circumstances I am persuaded that this is indeed a case where we can and should exercise the new freedom to depart from retained EU case law as Arnold LJ suggests." (Industrial Cleaning Equipment (Southampton) Limited v. Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWCA Civ 1451, Nugee LJ with whom King LJ agreed)

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