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US Court Refuses to Rule on EU Trade Mark Infringement

September 6, 2011

A US District Court has said that it is not obliged to rule on claims of EU trade mark infringement.

Levi Strauss & Co brought proceedings for trade mark infringement and cybersquatting against online trader Papikian Enterprises Limited in the California District Court. The complaint included a claim that Papikian had breached Levi Strauss & Co’s EU trade marks by importing Levi goods into the EU without the company’s permission. Papikian brought a motion for summary judgment which was denied by the Court who found against Papikian on all grounds apart from the EU claim. 

The Court refused to exercise their “supplementary jurisdiction” in this case (which allows a court to deal with foreign claims related to an action that falls within their jurisdiction) as it found that Levi Strauss & Co had not provided adequate reasons why the European law claim should be dealt with in the US rather than in one of the European courts.

The Court found that:

  • European courts were better placed to adjudicate on European trade mark protection
  • There was no suggestion by Levi that a court in Europe would inadequately protect its rights
  • International treaties such as the World Intellectual Property Organisation’s TRIPS agreement provide for the independence of countries who have issued European marks to Levi Strauss & Co to adjudicate the rights of Levi Strauss & Co under those marks
  • This finding did not mean that the Court would refuse jurisdiction in all foreign trade mark claims.

The Court indicated that the occasion could arise where it would be appropriate for US Courts to make a determination on European trade mark law. However the facts of this case were such that had the Court allowed the European law claim to proceed, it would have enabled Levi Strauss & Co to enforce an importation ban into the EU based on EU trade mark law, something that it could not do under US trade mark law.

Contributed by Carol Plunkett