A rare decision on the operation of jurisdiction rules between England and Scotland has just been issued by the Court of Session in Edinburgh. In it The University of St Andrews was found to be entitled to pursue proceedings in Scotland against a company alleged to have infringed its trade marks in student gowns. In his written opinion (which can be accessed here), Lord Doherty rejected arguments made by Student Gowns Limited, that the case should be heard in England. Instead, it was held that the subject matter of the dispute “has a real and substantial connection with Scotland” and that the Scottish courts have jurisdiction to hear the claim. His Lordship also rejected a plea of forum non conveniens.
According to the University, Student Gowns had begun to market for sale a version of the St Andrews undergraduate gown on its website using the University’s protected signs as well as direct sales made in St Andrew in September 2018, by employees of the company. The University seeks an interdict to prevent Student Gowns from infringing its trade marks in “University of St. Andrews”, “St. Andrews University” or “The University of St Andrews” and from passing off its gowns as being those authorised by it.
The University alleges that the references made by Student Gowns to the gowns being made to “university specifications” are likely to cause confusion among students and was exacerbated by the University’s view that their gowns are of “inferior quality” to those authorised by it.
Student Gowns rejects the University’s claims, denying that there had been any infringement of the University’s trade marks or that there had been any passing off. However, in advance of any consideration of the University’s IP claims a preliminary hearing on Student Gowns’ challenge to jurisdiction took place. It was advanced that the Court of Session had no jurisdiction to hear the case, or if it did, that it ought to exercise its discretion and decline jurisdiction in favour of the High court in England on the ground of forum non conveniens. The University relied upon the special ground of jurisdiction in Rule 3(c) of the Civil Jurisdiction and Judgments Act 1982 stating that it could choose between Student Gown’s domicile or the place where the harmful event occurred.
“A real and substantial connection”
Lord Doherty found that the plea of no jurisdiction was not well founded, holding that the place of damage was where the trade mark was registered. As the trade mark was registered in the UK, the courts of each of the UK jurisdictions was competent to hear an infringement claim concerning it. Similarly, as the damage was done in the UK, then damage was done in each jurisdiction of the UK. His Lordship found there was a very real and substantial connection with Scotland.
Student Gowns argued that the relevant sections of its website were “not specifically marketed, aimed or directed at customers in Scotland". The Court was informed that undergraduate gowns were typically purchased by students only after their place at university had been confirmed but before the start of the academic year. Furthermore, as far as online sales were concerned, only a minority of undergraduates, who purchased gowns, were from Scotland – the majority being from elsewhere in the UK, or even overseas.
Student Gowns argued that, as it principally carried on business in England (online advertising was instigated there), the jurisdiction where it was domiciled was more appropriate.
However, in relation to the University’s passing off claim, Lord Doherty found that the University was entitled to found upon Scotland as the place of harm:
“The place of the damage is the place where the goodwill concerned subsists and where it is protected by the law. 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.”
Plea of forum non conveniens
The Court held that for this plea to succeed it would need to be shown that England and Wales was a “clearly or distinctly…more appropriate forum for the proceedings”, but the University’s decision to choose the Court of Session could not be decisive. Arguments relating to the location of witnesses were not found to be persuasive as each party had two witnesses located in their home jurisdictions. An interesting suggestion that it would be less expensive for the dispute to be resolved in the English courts was not advanced. Lord Doherty pointed out that to consider relative expense between the jurisdictions he would have needed to see a comparison of legal fees and legal expenses. We would be surprised if the case could be handled more cheaply in the High Court, but perhaps IPEC would be a different case. Thankfully, Lord Doherty was of the view that substantial justice in the case could be done in Scotland. It is very doubtful submissions were made to the contrary.
At the time of writing it is not known if Student Gowns will appeal to the Inner House of the Court of Session.
What can we take away from the case?
This case serves as a useful reminder that trading activity in one part of the UK which causes harm in another, can lead to trade mark infringement and passing off claims in that other part. Although Student Gowns is based in London, the Court focussed on the target market of its business activities – Scottish undergraduate students. Businesses in England who trade across the UK should be mindful of the potential risk of being sued in the Court of Session. Certainly undue reliance should not be placed on the relative convenience to them of the High Court as compared to the Court of Session. Although the law relating to trade marks and passing off are the same across the UK, the Scottish procedure is different in many respects.