High Court Rules on Intellectual Property Dispute Between Seraphine Limited and Mamarella GmbH

High Court Rules on Intellectual Property Dispute Between Seraphine Limited and Mamarella GmbH

The High Court of Justice, Business and Property Courts of England and Wales, Intellectual Property Enterprise Court (ChD), delivered a significant ruling on an intellectual property dispute between Seraphine Limited and Mamarella GmbH.

On 1 March 2024, the court had previously determined that Seraphine was entitled to serve proceedings out of the jurisdiction without the court's permission, rejecting Mamarella's application for service to be set aside. The court also refused Seraphine permission to amend its case to introduce further design rights and infringing garments.

Following the initial judgment, Seraphine provided Mamarella with a revised draft Amended Particulars of Claim, which Mamarella accepted. The Amended Particulars of Claim were served on 28 March 2024.

Mamarella had initially sought a stay of the proceedings pending parallel litigation in Munich. However, faced with legal authority requiring overwhelming reasons for a stay on forum non conveniens grounds, Mamarella withdrew its application for a stay on that basis. Instead, the court directed that Mamarella file a Defence by 24 May 2024, with the option to restore the stay application if necessary.

Mamarella did not file a Defence by the deadline. Instead, it sought a stay of the proceedings pending the Munich court's decision. The High Court considered submissions from both parties, including evidence from their solicitors, Mr. Clay for Mamarella and Mr. Bennett for Seraphine.

The Munich court had indicated that Mamarella's claims were not admissible as initially formulated but allowed Mamarella to amend its claims. The amended claims sought a declaration that Mamarella had not infringed Seraphine's unregistered Community design rights through its advertising or sale of 30 identified products.

The Munich court scheduled an oral hearing for 18 November 2024, with judgment expected within 4 to 8 weeks thereafter. The High Court noted that the Munich proceedings involved four garments also at issue in the current proceedings (the 'Overlap Garments') and four additional garments not in issue in Munich.

Mamarella argued that a stay was necessary to avoid unnecessary expenditure on issues being litigated in Munich. Seraphine opposed the stay, emphasizing the need for timely progression of the case.

The High Court decided not to order a stay, directing Mamarella to serve its Defence by 3 July 2024. The court emphasized that any assessment of the impact of the Munich judgment on the current proceedings would be better addressed after the Munich court's decision.

The court also noted that a case management conference would be scheduled in early autumn to consider directions to trial, taking into account the proceedings in Munich.

This ruling highlights the complexities of managing parallel litigation in different jurisdictions and underscores the importance of timely progression in intellectual property disputes.