Damages Not An Adequate Remedy In Trade Mark Dispute

Published date09 July 2021
Subject MatterIntellectual Property, Litigation, Mediation & Arbitration, Trademark, Arbitration & Dispute Resolution
Law FirmWilliam Fry
AuthorMs Laura Scott and Colette Brady

The Irish High Court has granted an interlocutory injunction restraining the infringement of a plaintiff's registered trade mark, finding that damages would not be an adequate remedy in the circumstances.

The Irish High Court (Court) has granted an interlocutory injunction restraining the infringement of the plaintiff's registered trade mark in the recent case of Aviareto Ltd v. Global Closing Room Ltd [2021] IEHC 377, holding that damages would not be an adequate remedy for the plaintiff in the circumstances.

Background

The services provided by both the plaintiff and the defendant are very specialised, and the underlying facts are quite complex. Therefore, this article is confined to the pertinent facts and key issues arising from the judgment.

The plaintiff is a joint venture between SITA SC and the Irish Government and acts as registrar and operator of the International Registry of Mobile Assets in Aircraft Equipment.

At considerable effort and expense, the plaintiff had developed a digital platform in relation to the registration of interests in aircraft and mobile assets. This digital platform was named "Closing Room", which the plaintiff registered as a trade mark in a number of jurisdictions, including as an EU trade mark in Classes 9, 35, 36, 38, 42 and 45 (plaintiff's EUTM).

The defendant was incorporated in Ireland in August 2019 and is related to a US company, AIC Title Agency LLC (AIC), who provide "aircraft closing services" under the trade mark "Aircraft Closing Room". AIC and the plaintiff reached a settlement in respect of the use of the trade mark "Aircraft Closing Room" in August 2019.

In September 2019, the defendant filed an EU trade mark application for the name 'Global Closing Room' (Disputed Mark) in the same six Classes protected by the plaintiff's EUTM. The plaintiff opposed this EUTM application.

There was considerable dispute between the parties regarding the extent of promotional and business activities carried out by the defendant under the Disputed Mark between late 2019 and mid-2020. The defendant alleged that considerable activity had taken place, whereas the plaintiff pointed to the lack of evidence to support this. The extent of activity under the Disputed Mark was relevant to assess:

  1. whether the plaintiff had delayed in issuing the proceedings (Delay Issue), and
  2. the "balance of convenience". In particular, whether the plaintiff had failed to take action while the defendant expended considerable time, effort and...

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