The Black & Decker Corporation v Dvize BV, Court of Appeal - Patents Court, December 21, 2017, [2017] EWHC 3387 (Pat)

Resolution Date:December 21, 2017
Issuing Organization:Patents Court
Actores:The Black & Decker Corporation v Dvize BV

Case No: HP-2017-000062

Neutral Citation Number: [2017] EWHC 3387 (Pat)




Rolls Building

Fetter Lane, London, EC4A 1NL

Date: 21 December 2017

Before :


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Between :

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Jonathan Moss (instructed by Venner Shipley LLP) for the Claimant

Stewart Chirnside (instructed by Penningtons Manches LLP) for the Defendant

Hearing date: 15 December 2017

Further written submissions 18 December 2017

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  1. There are two applications before the Court:

    i) an application by the Claimant (``BDC'') by application notice dated 9 October 2017 for an interim injunction to restrain the Defendant (``Dvize'') from using BDC's EU Trade Marks Nos. 12 786 323 (BLACK + DECKER) and 12 788 352 (BLACK + DECKER device) (``the Trade Marks'') in the United Kingdom until the conclusion of the trial; and

    ii) an application by Dvize, which is incorporated, and thus domiciled, in the Netherlands, by application notice 21 November 2017 challenging the jurisdiction of this Court to try BDC's claim against Dvize.

  2. Dvize was licensed to use trade marks corresponding to the Trade Marks under a manufacturing and distribution agreement dated 27 April 2012 (``the 2012 Agreement'') which expired on 31 December 2016. Dvize contends that the parties entered into a replacement agreement on 25 May 2016 (``the Maryland Agreement'') under which it is licensed to use the Trade Marks until 31 December 2021, alternatively that BDC is estopped from denying the existence of such an agreement. BDC disputes that any agreement was concluded on 25 May 2016 or that it is estopped. BDC contends that it unilaterally granted Dvize consent to use the Trade Marks until 31 December 2017 unless terminated earlier and that it terminated that consent with effect from 9 October 2017. Accordingly, it is common ground that Dvize's entitlement to use the Trade Marks at least from after 31 December 2017, and possibly from after 9 October 2017, depends on whether the Maryland Agreement was concluded or BDC is estopped.

  3. BDC issued the Claim Form in these proceedings on 21 September 2017. In the Claim Form, BDC sought conventional relief for infringement of the Trade Marks, but it also sought a declaration that ``the 2012 Agreement has terminated and the provisions no longer apply''. Furthermore, in the Form N510 ``Notice for service out of the jurisdiction where permission of the court is not required'' completed by BDC pursuant to CPR rule 6.34, BDC checked the box stating that ``each claim made against the defendant to be served and included in the claim form is a claim which the court had power to determine under the Judgments Regulation and the defendant is a party to an agreement conferring exclusive jurisdiction within article 25 of the said Regulation''. The exclusive jurisdiction agreement that was relied upon was the 2012 Agreement.

  4. At the hearing, however, BDC did not rely upon any cause of action in contract, nor did it contend that this Court had jurisdiction by virtue of Article 25 of European Parliament and Council Regulation 1215/2012/EU of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (``the Brussels I Recast Regulation''). Instead, BDC relied purely upon its claim for trade mark infringement, and contended that this Court had jurisdiction by virtue of Article 125(5) of European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 upon the European Union trade mark (``the EUTM Regulation''). Accordingly, counsel for BDC confirmed that the Court should proceed in the basis that the Claim Form would be amended to delete the claim relating to the 2012 Agreement, and parallel amendments would be made to the Particulars of Claim.

  5. BDC also contends that, even if this Court does not have jurisdiction over its claim on the merits, it does have jurisdiction to grant an interim injunction pursuant to Article 131 of the EUTM Regulation. In that event, BDC undertakes to commence proceedings for infringement of the Trade Marks against Dvize in the Netherlands.

  6. In the event that the Court concludes that it has jurisdiction over BDC's claim on the merits, Dvize offers an undertaking not to use the Trade Marks in the UK until the conclusion of the trial. No such undertaking is offered by Dvize in the event that the Court concludes that it does not have jurisdiction.

    Factual background

  7. The following account of the factual background is based upon the evidence served by the parties on the two applications before the Court, which consists of two witness statements of Darrin Shaya (Director of Patents, Europe of Stanley Black & Decker Inc (``SBD'')) and two witness statements of Amit Datta (a Senior Licensing Manager for the BLACK + DECKER brand employed by SBD) served on behalf of BDC and two witness statements of Adriaan Van Oort (a director and one of the two owners of Dvize) and a witness statement of Rustam Dubash (of Dvize's solicitors) served on behalf of Dvize. As such, my account is necessarily provisional and incomplete, but nevertheless it appears that all the key correspondence between the parties has been exhibited to the witness statements.

    The parties

  8. BDC, which is incorporated in the State of Maryland, USA, is a wholly-owned subsidiary of SBD, a supplier of industrial and domestic tools which are marketed under the well-known BLACK + DECKER and STANLEY trade marks. BDC exploits these trade marks, at least in part, through licensing. BDC uses the services of a licensing agency called Beanstalk to negotiate with prospective licensees. The precise division of responsibilities between SBD and BDC is unclear on the evidence, but probably does not matter. I shall refer to the two inter-changeably.

  9. Dvize is a manufacturer and distributor of garden tools. LTM Holding BV (``LTM'') is a Dutch company owned by Loek Tertaas, who is the other owner of Dvize.

    Negotiations over the 2012 Agreement

  10. Mr Shaya gives quite a lot of evidence in his witness statements about the process by which the 2012 Agreement was negotiated and concluded. Very little of what Mr Shaya says about this is disputed by Mr Van Oort in his witness statements. Much of the detail is unnecessary for present purposes, but the key points are as follows.

  11. Mr Van Oort explains that, before becoming BDC's licensee, Dvize was the distributor of STANLEY branded garden hand tools on behalf of an Australian company, IMS International P/L Dandenong Victoria (``IMS'') which held the Australian and European licences. In September 2011, at the GAFA garden trade show in Cologne, Dvize was approached by Beanstalk to become the STANLEY licensee in Europe in place of IMS. During the discussions about Dvize becoming a STANLEY licensee, Dvize was offered the licence for BLACK + DECKER branded products as well.

  12. On 9 January 2012 Matthew Tobia of Beanstalk sent Mr Shaya two deal memos which had been completed by Beanstalk in relation to the BLACK + DECKER and STANLEY licences. At that time, BDC's practice was that licence agreements were drafted by SBD's legal department in Slough, where Mr Shaya was based. On 22 February 2012 Mr Shaya sent Beanstalk a draft Dvize BLACK + DECKER garden hand tool licence which he had prepared with the assistance of BDC's external solicitors. There were then negotiations between BDC and Dvize, which were mainly but not exclusively conducted via Beanstalk, over the detailed terms of what became the 2012 Agreement.

  13. On 20 April 2012 Mr Tobia sent Daniel Kinsbergen of Dvize an email, copied to Dvize's Dutch lawyers and Ian Joynson of Beanstalk, saying:

    ``Please see attached what we hope to be the final draft of the Dvize Black & Decker license.


    Assuming you are happy with this final agreement, please sign and return 4 copies to us by registered courier to the address below. We will then route to SBD for full execution and return a fully executed copy back to you.


    Please also return a scanned copy of the signed agreement before sending the agreement.''

  14. On 24 April 2012 Mr Kinsbergen replied confirming that ``the 4 original documents will be signed and send via FEDEX to you''. On 2 May 2012 Mr Kinsbergen sent the Fedex tracking number. On 3 May 2012 Mr Tobia reported receipt of the agreements signed by Dvize to Mr Shaya, but noting that Beanstalk had spotted a minor typo. The agreements had also been dated 27 April 2012 by Dvize in manuscript.

  15. On 8 May 2012 Mr Tobia sent Mr Kinsbergen an email saying:

    ``Whilst going through the Partially Executed copies of the B&D Garden Hand Tools agreement our finance team has highlighted a minor spelling mistake on the Beanstalk bank details ...

    Following a discussion with the SBD legal team they were happy for us to amend this typo by pen and confirm with you that you are happy with this amendment.

    Please review the changes made in the attached document and confirm Dvize is happy for us to proceed and forward it to Stanley Black & Decker to fully execute the agreement.''

  16. Mr Kinsbergen replied the same day saying:

    ``We agree to move forward with the made change ... with a pen.

    Please proceed and forward to Stanley Black & Decker to fully execute the agreement.''

  17. It is not clear from Mr Shaya's evidence whether, and if so when, BDC informed Dvize that it had executed the 2012 Agreement or whether, and if so when, it sent Dvize a copy of the 2012 Agreement signed by BDC.

  18. Mr Shaya says that the same procedure was subsequently followed with respect to the STANLEY licence agreement.

    The 2012 Agreement

  19. Under the 2012 Agreement BDC granted Dvize a non-exclusive licence to manufacture (and sub-contract manufacture)...

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