Seraphine Limited vs Mamarella GmbH

This case concerned a dispute between Seraphine Limited and Mamarella GmbH over unregistered design rights and the jurisdiction to hear the case.

TLDR:

• Seraphine Limited sued Mamarella GmbH for infringing unregistered design rights.
• The court had to determine if it had jurisdiction to hear the case.
• The court found that Seraphine had a good arguable case for jurisdiction.
• Seraphine was permitted to serve proceedings out of the jurisdiction without court permission.

Seraphine Limited, the claimant, and Mamarella GmbH, the defendant, previously had a trading relationship where Mamarella resold maternity clothing produced by Seraphine. The relationship ended in 2022 when Seraphine alleged that Mamarella was selling maternity clothing infringing Seraphine's unregistered design rights.

Seraphine commenced proceedings on 13 June 2023, initially serving Mamarella in Germany by post, citing the 1928 Convention between the UK and Germany. Mamarella contested this, seeking to set aside service and challenge the court's jurisdiction, and alternatively requested a stay pending German proceedings.

Seraphine re-served the proceedings under the Hague Convention on 16 October 2023. Mamarella issued a second application, similar to the first but excluding the invalid service point. The core issue was whether Seraphine could serve out of jurisdiction without court permission.

Seraphine relied on CPR 6.33(2B)(b), arguing that a contract between the parties contained a jurisdiction clause favoring English courts. The court examined the 'good arguable case' test, finding Seraphine had a better argument that the 2021 terms document, signed by both parties, included such a clause.

The court found that the 2021 terms document was intended to govern future sales and that Mamarella's orders were subject to these terms, creating a contract that included the jurisdiction clause. Thus, Seraphine had a good arguable case for serving proceedings out of jurisdiction without court permission.

Seraphine also sought to amend its claim to include additional design rights and rely on earlier terms from 2015 and 2019. The court found insufficient evidence that Mamarella's orders through Seraphine's TradeWeb platform were subject to these terms, limiting Seraphine's amendments to designs dependent on the 2021 terms.

Mamarella withdrew its application for a stay on forum non conveniens grounds but agreed to directions for a defense post-Munich proceedings. The court did not need to consider the application for German law evidence or the initial service validity under the 1928 Convention.

Legal representatives: Ben Lewy (instructed by Fox Williams LLP) for the Claimant, Gwilym Harbottle (instructed by Palmer Biggs Ip Solicitors) for the Defendant.

Judicial Panel: Michael Tappin KC (sitting as a Deputy Judge of the High Court)

Case Citation Reference: [2024] EWHC 425 (IPEC)