Sportswear in the Court of Appeal
Thanks once again to the IPkat for prompt details of the Court of Appeal's decision in Sportswear v Stonestyle. The first instance decision involving the striking out of a defence based on an agreement in breach of article 81 because of, inter alia the lack of sufficient pleaded nexus between the alleged breach of article 81 and the alleged infringment.
The Court of Appeal's judgment gives an helpful overview of key early cases on the interface between IP and competition (Consten and Grundig, Sirena, Keurkoop v Nancy Kean), and the more recent Courage v Crehan on private actions for damages even when there has been a breach of competition law. There is also interesting detailed analysis of argument that, despite these and other cases and much commentary to the contrary, competition law should not provide a defence to IP infringment- it is a separate sword, rather than a shield. Finally there is consideration of Glaxo v Dowelhurst regarding whether combined trade mark infringement actions brought by several companies, arguably purusant to an agreement or concerted practice in breach of article 81, could constitute themselves a breach of article 81, such that this could be a defence to infringement. In that case, an amendment to this effect had been allowed.
The conclusions of all three judges are interesting. There is concern that introducing competition defences to IP actions, with the extra evidence this may require, will cause further delay and cost in an action. However, "convenience is not always the same as justice". There is also recognition that trade mark and competition law cannot "invariably" be compartmentalised - and that on the facts here the proposed article 81 defence, which could also strenghten section 12 TMA arguments, "was not unarguable for lack of a legally sufficient nexus". There could be a sufficient nexus in law and in fact - whether there was is a question for trial.
There is an important decision, particularly given our project's interest in developing the interface between IP and competition. The Court of Appeal still makes it clear that a nexus is required to be pleaded and must be proved on the facts - but notes that it is not clear that competition law can only provide a separate sword, not a shield (something arguably already established as a possibility in Intel v Via) . Will the greater openness to such arguments pave the way for the next Magill? Or will it be that much harder for an article 81 competition defence to succeed?
The Court of Appeal's judgment gives an helpful overview of key early cases on the interface between IP and competition (Consten and Grundig, Sirena, Keurkoop v Nancy Kean), and the more recent Courage v Crehan on private actions for damages even when there has been a breach of competition law. There is also interesting detailed analysis of argument that, despite these and other cases and much commentary to the contrary, competition law should not provide a defence to IP infringment- it is a separate sword, rather than a shield. Finally there is consideration of Glaxo v Dowelhurst regarding whether combined trade mark infringement actions brought by several companies, arguably purusant to an agreement or concerted practice in breach of article 81, could constitute themselves a breach of article 81, such that this could be a defence to infringement. In that case, an amendment to this effect had been allowed.
The conclusions of all three judges are interesting. There is concern that introducing competition defences to IP actions, with the extra evidence this may require, will cause further delay and cost in an action. However, "convenience is not always the same as justice". There is also recognition that trade mark and competition law cannot "invariably" be compartmentalised - and that on the facts here the proposed article 81 defence, which could also strenghten section 12 TMA arguments, "was not unarguable for lack of a legally sufficient nexus". There could be a sufficient nexus in law and in fact - whether there was is a question for trial.
There is an important decision, particularly given our project's interest in developing the interface between IP and competition. The Court of Appeal still makes it clear that a nexus is required to be pleaded and must be proved on the facts - but notes that it is not clear that competition law can only provide a separate sword, not a shield (something arguably already established as a possibility in Intel v Via) . Will the greater openness to such arguments pave the way for the next Magill? Or will it be that much harder for an article 81 competition defence to succeed?
posted by Dr Abbe Brown at 2:35 pm
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