THE UNIVERSITY COURT OF THE UNIVERSITY OF ST ANDREWS AGAINST STUDENT GOWNS LTD [2019] ScotCS CSOH

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	Scottish Court of Session Decisions
You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> THE UNIVERSITY COURT OF THE UNIVERSITY OF ST ANDREWS AGAINST STUDENT GOWNS LTD [2019] ScotCS CSOH_86 (08 November 2019) URL: http://www.bailii.org/scot/cases/ScotCS/2019/2019_CSOH_86.html Cite as: [2019] CSOH 86, 2019 SLT 1347, [2020] ETMR 17, 2019 GWD 35-562, [2019] ScotCS CSOH_86

[1] In this intellectual property cause the pursuer seeks interdict against the defender

infringing the pursuer’s United Kingdom trade mark for the signs “University of

St Andrews”, “St Andrews University”, or “The University of St Andrews” in relation to the

sale by the defender of gowns to the pursuer’s students; and from passing off its gowns as

[2] The defender is a company incorporated in England and Wales and it has its

registered office and place of business in London. In the defences it has taken pleas of no

jurisdiction and forum non conveniens. The matter came before me for a preliminary proof

[3] The pursuer avers that at about the beginning of the 2018 academic year the defender

began marketing for sale a purported version of a St Andrews undergraduate gown which it

stated was made to University specifications; that it marketed the gown on its website and

on Google and Amazon; and that in doing so it used the protected signs. It also avers that in

September 2018 employees of the defender came to St Andrews where they marketed and

sold the defender’s gowns to students representing that they were made to University

specifications. It avers that the defender’s actions have caused confusion among

undergraduate students. It maintains that the defender has infringed the pursuer’s trade

mark, and that it has passed off its goods as those of or authorised by the pursuer. It further

avers that the defender’s gowns are of inferior quality to the gowns authorised by the

pursuer, that they are made from more lightweight fabric, and that the bobbling effect of the

nap cloth is less pronounced than on the gowns authorised by the pursuer; that the

defender’s infringements of the trade mark have damaged the mark and the reputation of

the mark; and that it is reasonably apprehensive that the defender will continue to infringe

the trade mark and will continue to pass off its goods as those of or authorised by the

pursuer unless restrained from doing so. It also avers that at the beginning of the 2018

academic year 200 fewer gowns than normal were sold by its subsidiary and that a

significant proportion of the reduction in sales is attributable to students buying gowns from

the defender; that the action relates to wrongful acts in Scotland and marketing aimed and

directed towards customers in Scotland, in particular the students attending and about to

attend the University of St Andrews; that around 31% of the University’s undergraduate

students are from Scotland; that most undergraduates do not buy their gowns until they

have arrived in St Andrews; that of the official gowns sold in 2018, around 22% were pre-

ordered; and that the fact that some potential customers for gowns are outside Scotland

does not detract from the fact that the defender’s activities are directed to a material extent

towards customers in Scotland. In response to the defender’s averments in answer the

pursuer admits that the defender has made complaints against the pursuer, Ede &

Ravenscroft and a number of English universities alleging breach of provisions of the

Competition Act 1998, under explanation that so far as the pursuer is aware, none of those

complaints have proceeded beyond a pre-action letter. The pursuer avers that other possible

legal proceedings would include claims brought by different claimants, in relation to the

gowns of different universities, and would involve different intellectual property rights such

as copyright; that none of the postulated proceedings are relevant to the question of forum

non conveniens; and that any proceedings which the defender might bring against the

pursuer before the Competition Appeal Tribunal (“the CAT”) would be likely to be treated

[4] The defender denies infringement of trade mark and passing off. Its first and second

pleas-in-law are a plea of no jurisdiction and a plea of forum non conveniens. It avers that it

has sold a total of 89 of the gowns, 59 of which were sold in St Andrews on 9 and

10 September 2018; that, of the remaining 30, 14 were sold via the website to customers with

addresses outside Scotland; that St Andrews undergraduate gowns tend to be purchased by

students after their place has been confirmed but before they commence their studies; that a

minority of undergraduates are from Scotland and that the majority are from elsewhere in

the UK or overseas; and (in answer 3) that “Accordingly the pages of the defender’s

website... are not specifically marketed, aimed or directed at customers in Scotland.” It

admits that the bobbling effect on the nap cloth of its gowns is less pronounced and that its

gowns are made from a lighter fabric. It avers that the present proceedings are part of a

wider dispute and it describes the other proceedings which it contemplates may be

commenced. It further avers that the place where the alleged harmful events have occurred

is England and that the Court of Session is neither the natural nor the appropriate forum for

[5] In advance of the proof the parties had been ordained to lodge affidavits or signed

witness statements of the witnesses upon whom they intended to rely at the proof. The

pursuer lodged affidavits from Joe Richards and Roy Drummond. The defender lodged

signed witness statements from Stephen Tupper and Ruth Nicholls. In the result, none of

the witnesses gave oral evidence because the parties entered into a joint minute of

“1. Without prejudice to any submissions by either party as to relevancy, the

statements and affidavits of the witnesses for the pursuer and the defender may be

received as their evidence for the purposes of the preliminary proof without

(i) This agreement does not extend to Mr Tupper’s evidence as in so far

(a) the merits of the parties’ positions or the likely outcome or

prospects of success on any question arising in these proceedings or in

(ii) Mr Richard’s evidence in so far as it relates to whether the

University’s property is vested in the University Court and/or the University

(ii) (sic) For the avoidance of doubt, Ms Nicholl’s evidence as to the

defender’s future intentions is to be received for the purposes of explaining

the position adopted by the defender on that question, and without prejudice

[6] Mr Richards is Group Financial Controller of SOI Group Limited, which company

provides management services to the subsidiary companies of the University of St Andrews.

His evidence was that in the academic year 2018/19 27% of the student intake came from

Scotland. 31% of current undergraduates were Scottish. There were “strong populations”

from England, the USA, China and Germany. In the academic year 2014/15 56.2% of the

student population were from the United Kingdom and 43.8% were from other countries.

Undergraduate gowns could be pre-ordered on the University Shop’s website and collected

from the shop, but only about a quarter of gowns were pre-ordered. The vast majority of

undergraduate gowns were bought after undergraduates arrived in St Andrews, either at

the University Shop or at the gown sale held each September in Parliament Hall. In 2018/19

there were 751 gowns sold of which 163 (22%) were pre-orders and 588 (78%) were sold at

the Parliament Hall sale or at the shop. Fifty eight of the pre-orders were from students

domiciled in Scotland and 44 were from students domiciled in England and Wales.

Forty seven of the 163 pre-orders had been made in the month of September 2018.

[7] Mr Drummond is the Chief Legal Officer for the University of St Andrews. His

evidence was that Mr Tupper’s assertion that the action had been raised to stymie any

proposed competition law claim by the defender against the pursuer was incorrect. There

was no correlation between the current action and the proposed competition law claim. In

September 2018, following complaints to the University by dissatisfied students who had

purchased the defender’s gowns, the pursuer had become aware of the defender’s

marketing and sale of gowns in St Andrews and via its website. On 10 September 2018 the

University’s solicitors had written a cease and desist letter to the defender. Mr Tupper had

replied on behalf of the defender by letter dated 14 September 2018 stating that the defender

was in the course of compiling a letter of claim for “anti-competitive behaviour in the

academic dress market” under the Competition Act 1988. Thereafter Mr Drummond had

instructed the University’s solicitors to raise proceedings for trade mark infringement and

passing off. The threatened competition claim had not triggered the raising of the action.

Nor at the time the action was raised was Mr Drummond aware of any threatened action by

the defender against Ede and Ravenscroft. The purpose of the proceedings was to prevent

[8] Ms Nicholls is the defender’s Director of Operations. The company’s only office is in

Stratford, London where Ms Nicholls and the defender’s managing director, Oliver Adkins,

work. Sales through the website are manually processed in the Stratford office. The

defender’s stock of academic dress is stored at a warehouse in Swindon. The servers for the

defender’s website are hosted in the USA. Ms Nicholls manages the defender’s online

presence from the Stratford office. She is responsible for the content of the website and for

the defender’s pay-per-click advertising on Google, Facebook and Amazon. She carries out

most content updates to the website, but if a change involves technical difficulty she would

request one of the defender’s directors (who resides in Australia) to assist or she would

engage the website’s developer (who is based in India) to provide the necessary services.

For the start of the academic year 2018/19 the defender had obtained 200 undergraduate

gowns from its suppliers for sale to St Andrews students. In September 2018 she and Mr

Adkins spent 4 days in St Andrews to promote sales of undergraduate gowns by

distributing flyers and having a roadshow at the St Andrews Ale House. Prior to the visit

there had been 11 sales online. The defender had delivered “half” of those gowns to

addresses in England. Of the remainder “1 or 2” were collected from them in St Andrews.

The defender did not propose to repeat the roadshow in 2019. It would continue to market

undergraduate gowns for St Andrews students on its website and by using Google ads. It

would like to sell the remainder of the stock it had bought. It was “undecided” whether it

would order any new gowns: “We will probably just continue to sell the existing stock that

we have.” The defender does not have any business operations in Scotland. None of its

advertising or marketing, specifically its website, is directed from Scotland. It has no office

or other place of business (and no employees located or working) in Scotland. It has no

bank account or other assets in Scotland. None of its directors are in Scotland. Paragraph 25

“As a result of this action in Scotland, [the defender] is faced with the additional

expense of fighting for fair access to the UK national academic dress market in two

different jurisdictions. This is additional expense which, not least because of the

efforts to keep us out of that market by Ede & Ravenscroft (and those universities

[9] Mr Tupper is a solicitor based in London who is instructed on behalf of the defender

and a related company, Churchill Gowns Limited. The defender and Churchill Gowns

Limited are part of the Churchill Gowns group. Churchill Gowns was set up in Australia in

2014 and it had some success breaking into the academic gowns market there which up until

recently had been dominated by one or two traditional suppliers. The defender hoped to do

the same in the United Kingdom. In the UK, companies in the Ede & Ravenscroft group

(“E&R”) enjoyed a dominant position in the academic dress market supplying about 75% of

universities and about 80% of students. At “120-odd”universities (including St Andrews)

E&R “had legal or de facto exclusive supply”; and E&R, in combination with many of these

universities (including St Andrews), had taken active steps to shut out new entrants to the

market, including the Churchill companies. E&R’s principal tactic had been to allege

infringement of intellectual property rights by competitors. In August 2018 E&R’s solicitors

alleged that the defender had infringed E&R’s copyright by selling bachelor hoods to

University of Bedford students. E&R threatened an injunction to prevent any production,

marketing or sales by the defender of academic dress for that university. W M Northam &

Company Limited (an E&R company) had emailed the defender claiming that it owned

concerning university hoods. It maintains that no part of the hood is an artistic work and

that section 51(1) of the Copyright, Designs and Patents Act 1988 is a complete defence.

Churchill therefore already faces the threat in England of a number of other IP-related

claims in respect of its supply of academic dress, and the work in relation to those claims is

being done in England. There is a dedicated IP Court in England and Wales - the

Intellectual Property Enterprise Court (“IPEC”). If E&R “made good on its threats”

Mr Tupper anticipated that any action would be begun there. There are specialist judges

and cases are dealt with quickly and at modest cost because recoverable costs are capped at

£50,000. In Mr Tupper’s view IPEC would be likely to accept jurisdiction over any trade

[10] Churchill has claims for damages for breach of statutory duty owed under the

Competition Act 1988. As a result of being shut out from the UK market Churchill had lost

the opportunity to establish its businesses and had lost profits of £3 million over a 3 year

period. Letters before action had been sent to the pursuer and to the Universities of

Bedford, London Metropolitan, and Canterbury. Churchill alleges that each of the

universities has combined with E&R in a common scheme which has allowed that

undertaking to abuse its dominant position in the academic dress market. The claims

should all be heard by the same court. The Court of Session does not have jurisdiction in

respect of the claims against the English universities. It is envisaged that the Churchill

companies would bring actions in the CAT where they would be tried together and that all

of the proceedings would be treated as English proceedings. If in the meantime E&R or

anyone else commences claims against Churchill in IPEC, an alternative would be for the

competition claims to be dealt with by the Competition List of the Business and Property

Courts (“B&PC”). While IPEC scale costs would not apply in such a case Mr Tupper

believed that costs management would be very likely to apply, with the result that if the

present dispute was heard in England costs would be lower than if the proceedings were to

continue in Scotland. Churchill’s witnesses and legal team and experts are based in London.

It would be more expensive and less convenient for them to come to Edinburgh. There

would be duplication of cost because Scottish solicitors would have to be engaged.

Mr Tupper believes that “the Scottish proceedings were begun in an attempt to stymie

[11] Sections 3, 16 and 49 of, and Schedule 4 to, the Civil Jurisdiction and Judgments

(1) Any question as to the meaning or effect of any provision of the Brussels

Conventions shall, if not referred to the European Court in accordance with the 1971

Protocol, be determined in accordance with the principles laid down by and any

(2) Judicial notice shall be taken of any decision of, or expression of opinion by,

16 - Allocation within U.K. of jurisdiction in certain civil proceedings.

(1) The provisions set out in Schedule 4 (which contains a modified version of

("Chapter II of the Regulation]) shall have effect for determining, for each part of the

United Kingdom, whether the courts of law of that part, or any particular court of

law in that part, have or has jurisdiction in proceedings where—

(a) the subject-matter of the proceedings is within the scope of the

Regulation as determined by Article 1 of the Regulation (whether or not the

(b) the defendant or defender is domiciled in the United Kingdom or the

proceedings are of a kind mentioned in Article 24 of the Regulation (exclusive

(3) In determining any question as to the meaning or effect of any provision

(a) regard shall be had to any relevant principles laid down by the

European Court in connection with Title II of the 1968 Convention or Chapter

II of the Regulation and to any relevant decision of that court as to the

meaning or effect of any provision of that Title or that Chapter;

49 Saving for powers to stay, sist, strike out or dismiss proceedings.

Nothing in this Act shall prevent any court in the United Kingdom from staying,

sisting, striking out or dismissing any proceedings before it, on the ground of forum

non conveniens or otherwise, where to do so is not inconsistent with the 1968

Convention or, as the case may be, the Lugano Convention or the 2005 Hague

Subject to the rules of this Schedule, persons domiciled in a part of the United

Persons domiciled in a part of the United Kingdom may be sued in the courts

of another part of the United Kingdom only by virtue of rules 3 to 13 of this

A person domiciled in a part of the United Kingdom may, in another part of

Chapter II of Regulation (EU) No 1215/2012 of 12 December 2012 on jurisdiction and the

recognition and enforcement of judgments in civil and commercial matters (the recast

1. Subject to this Regulation, persons domiciled in a Member State shall,

whatever their nationality, be sued in the courts of that Member State.

1. Persons domiciled in a Member State may be sued in the courts of another

Member State only by virtue of the rules set out in Sections 2 to 7 of this Chapter.

(2) in matters relating to tort, delict or quasi-delict, in the courts for the place

The recast Brussels I Regulation replaced the Brussels I Regulation (Regulation (EC)

No 44/2001). Article 5(3) of the Brussels I Regulation was in the same terms as Article 7(2) of

[12] Mr O’Brien submitted that the pursuer founded upon the special jurisdiction in rule

3(c) of Schedule 4 to the CJJA. That rule is based on the equivalent European provision now

found in Article 7(2) of the recast Brussels I Regulation. In interpreting Schedule 4, the court

is to have regard to relevant decisions of the Court of Justice of the European Union on the

equivalent European rules: CJJA, section 16(3)(a). Scotland is “the place where the harmful

event occurred or may occur”. The pursuer had the option to sue in the place of the

defender’s domicile or the place where the harmful event occurred or may occur. It had

chosen to exercise the latter ground of jurisdiction. The expression “place where the

harmful event occurred” covered “both the place where the damage occurred and the place

of the event giving rise to it”: Joined Cases C-509/09 and C-161/10 eDate Advertising GmbH v

X [2012] QB 654, paragraph 41 of the judgment of the court. With passing off, the place of

the damage is the place where the goodwill concerned subsists and is protected by the law

relating to passing off: cf. AMS Neve Ltd v Heritage Audio SL [2017] FSR 16, [2016] EWHC

2563 (IPEC), per HHJ Hacon at paragraph 25; AMS Neve Ltd v Heritage Audio SL [2018] FSR

23, [2018] EWCA Civ 86, per Kitchin LJ (as he then was) at paragraph 10. In the case of a

claim for infringement of a national trade mark the place where the damage occurred or

may occur is the place where the trade mark is registered: Case C-523/10 Wintersteiger AG v

Products 4U Sondermaschinenbau GmbH [2013] Bus LR 150, [2012] ETMR 31.

[13] Here, in relation to each right the place where the damage occurred or may occur is

in Scotland. The right to protect goodwill and prevent passing off subsists in Scotland. So

far as infringement of the trade mark is concerned, the place of the relevant damage is the

whole of the UK, including Scotland, because the trade mark is registered in the UK.

Accordingly the Scots courts have jurisdiction in relation to each aspect of the claim. The

pursuer has opted to sue in Scotland. It was entitled to exercise that choice. While it was

not essential to the existence of jurisdiction to bring the infringement proceedings, in fact

Scotland was the place where a very substantial part of the relevant damage had in fact

[14] If his principal submission (that the place of the damage in relation to infringement

was the whole of the UK) was not correct, Mr O’Brien’s secondary argument was that in the

case of online publication a claim for the whole loss could be brought either in the place

where the publisher was based (being the place of the event giving rise to the harm), or in

the place where the claimant had its “centre of interests” (because with online publication

that was the place of the harm): eDate, supra, paragraphs 48-49. The centre of the pursuer’s

interests was Scotland. Alternatively, he submitted that the place of the harm was Scotland

because the online advertising was directed or targeted at students here. Reference was

made to Bonnier Media Ltd v Smith 2003 SC 36, per Lord Drummond Young at paragraphs

18-20; and to the Opinion of the Advocate General (delivered on 28 March 2019) in AMS

Neve Ltd v Heritage Audio SL Case C-172/18 [2019] 3 WLR 489 at paragraphs 81 - 88.

[15] In relation to the activities which were carried out in St Andrews by Ms Nicholls and

Mr Adkins in September 2018, not only was the place of the damage Scotland, but the event

giving rise to the damage also took place there. Each of the two possible bases for rule 3(c)

[16] In the course of his submissions Mr O’Brien also made reference to Case C-68/93

Shevill v Presse Alliance SA [1995] 2 AC 18; Case C-45/13 Kainz v Panterhwerke AG [2015] QB

34; Case C-168/02 Kronhofer v Maier [2004] ECR 1-6009; and Case C-360 Coty Germany GmbH

[17] Ms Pickard submitted that the defender’s primary position was that this Court did

not have jurisdiction to try those parts of the claim that relate to the defender’s online use of

the signs said to be protected by the pursuer’s trade mark. She accepted that the court had

jurisdiction in so far as the claim was based upon the marketing event which had taken

[18] The problem here with the pursuer’s reliance on rule 3(c) special jurisdiction was

that the place of the damage was the place of registration of the trade mark: Wintersteiger.

Since the trade mark was a UK registered mark, the place of the damage did not assist in

allocating jurisdiction between the United Kingdom jurisdictions. Schedule 4 required the

court to determine the appropriate jurisdiction. Therefore, so far as rule 3(c) special

jurisdiction was concerned, the only way of allocating jurisdiction was by reference to the

place of the event giving rise to the damage. There was no doubt that so far as the online

activity was concerned the place of the event was England. The place of the event was the

“closest connecting factor” here. Rules of special jurisdiction such as rule 3(c) required to be

narrowly interpreted because they derogated from the general rule that jurisdiction was

based on domicile: Kainz v Panterhwerke AG, supra, judgment of the court at paragraphs

30-32; Coty Germany GmbH v First Note Perfumes NV, supra, judgment of the court at

[19] The pursuer’s alternative arguments were also unsound. Wintersteiger had expressly

ruled that the approach in eDate was not applicable in the context of online advertising.

Wintersteiger did not provide any support for the pursuer’s suggested targeting approach.

AMS Neve Ltd v Heritage Audio SL involved consideration of the regulation governing

community trade marks. While the Advocate General’s Opinion provided some support for

a targeting approach in relation to special jurisdiction under that regulation, the court

should be very cautious about applying the same approach here. The regulation of

community trade marks and the regulation of national trade marks were distinct and

different. Second, the Court of Justice might not agree with the Advocate General’s

[20] In my opinion it is clear that the plea of no jurisdiction is not well founded.

[21] The pursuer founds on the special jurisdiction in rule 3(c). In that regard it is well

established that a pursuer has the option of founding upon either the place of the damage or

the place of the event giving rise to the damage (Handelswekerij GJ Bier BV v Mines de Potasse

d'Alsace SA Bier v Mines de Potasse d’Alsace [1976] ECR 1735). I emphasise that point. At

times Ms Pickard appeared to suggest that it was for the court to decide which of the two

options was preferable. In my opinion that is not the court’s task. Rather, the question for

the court is whether the pursuer is entitled to found upon the jurisdictional ground which it

[22] I deal first with the passing off claim. The pursuer founds upon the place of the

damage being Scotland. In my view it is entitled to do so. 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

[23] I turn to infringement of the trade mark. In my opinion Wintersteiger provides clear

guidance. The place of the damage is the place where the trade mark is registered. Since the

trade mark is registered in the United Kingdom, each of the United Kingdom jurisdictions is

a place of the damage. Accordingly, the pursuer is entitled to found jurisdiction upon

[24] I can see that there might be scope for arguing that applying the approach in

Wintersteiger in the context of intra UK allocation of jurisdiction might result in a situation

where a jurisdiction was treated as a place of the damage even though in fact all material

damage was suffered in one or both of the other UK jurisdictions. On that scenario it might

be argued that the application of Wintersteiger would not ensure a sufficiently close

connection between the forum and the delictual dispute. However, in my opinion it is very

clear that in the present case Scotland has a very close and strong connection with the

dispute. On the pursuer’s case there has not been merely notional or immaterial damage in

Scotland because of infringement of the trade mark. A very substantial number of the

students to whom the online advertising was directed were in Scotland. The evidence is that

between 27% and 31% of undergraduates come from Scotland; that that is a greater number

than the combined total of undergraduates from England and Wales and Northern Ireland;

and that most of the students who buy undergraduate gowns do so after they have arrived

in Scotland. I think it fair to say that the defender’s online advertising was in fact directed to

a very material extent to students who would be in Scotland when they made a purchase.

[25] In relation to the activities of Ms Nicholls and Mr Adkins in St Andrews in

September 2018, not only was the place of the damage in Scotland, but the event giving rise

to the damage also took place there. In relation to those activities each of the two possible

[26] Since I have concluded that Mr O’Brien’s primary submission in relation to

jurisdiction for the infringement claim is correct, I do not propose to say much about his

alternative submissions. I do not think it is open to me to apply eDate in order to hold that

the place where the claimant’s main interests are based is to be treated as the place of the

damage. I agree with Ms Pickard that it is clear from Wintersteiger (paragraphs 22-25) that

eDate applies to infringements of personality rights and that it does not apply to the

determination of jurisdiction where the dispute involves intellectual property rights. As will

be apparent from the discussion above, I am satisfied that the pursuer’s case is that the

online advertising targeted students who would be likely to purchase gowns in Scotland,

and that actual substantial and material harm has occurred within Scotland. It is

unnecessary to rely upon Lord Drummond Young’s reasoning in Bonnier or upon the

Advocate General’s Opinion in AMS Neve Ltd v Heritage Audio SL in order to arrive at that

conclusion, and I do not do so. However, I think that both of those cases do tend to support

[27] On 5 September 2019 (after the hearing before me) the Court of Justice issued its

judgment in AMS Neve Ltd v Heritage Audio SL. The court confirmed that claims for

infringement of a community trade mark may be brought against traders who have

advertised or made offers for sale displayed electronically which are directed at the public in

the Member State where the trade mark proprietor is bringing court action; and that the

relevant court in that Member State has jurisdiction even if the decisions and steps to bring

about the online advert took place in a different Member State. Since the case concerned a

community trade mark the issue involved interpreting the words “Member State in which

the act of infringement has been committed” in Article 97(5) of Regulation No 207/2009. It

did not concern a national trade mark, where the relevant provision would have been

Article 7(2) of the recast Brussels I Regulation (which replaced Article 5(3) of Regulation

No 44/2001). However, the court observed at paragraphs 58 and 59 of the judgment:

“58 The interpretation of Article 97(5) of Regulation No 207/2009, as lex specialis

with respect to actions alleging infringement of EU marks, must, it is true, be

independent of the interpretation of Article 5(3) of Regulation No 44/2001 adopted

by the Court with respect to actions alleging infringement of national marks

(judgment of 5 June 2014, Coty Germany, C-360/12, EU:C:2014:1318, paragraph 31).

Nonetheless, the interpretations of the concepts of ‘Member State in which the act of

infringement has been committed’ and ‘the place where the harmful event occurred’,

in those provisions, must have a degree of consistency in order, in accordance with

the objective laid down in recital 17 of Regulation No 207/2009, to reduce as far as

possible cases of lis pendens as a result of the bringing of actions, in different

Member States, involving the same parties and the same territory, one brought on

the basis of an EU trade mark and another on the basis of parallel national trade

marks (see, to that effect, judgment of 19 October 2017, Merck, C-231/16,

59 If the rule of jurisdiction laid down in Article 97(5) of Regulation No 207/2009

were to be interpreted as meaning that that provision did not, unlike Article 5(3) of

Regulation No 44/2001, permit the proprietors of EU marks to bring an infringement

action before the courts of the Member State within which they seek a declaration of

an infringement, the consequence would be that those proprietors would bring

proceedings alleging infringement of an EU trade mark and proceedings alleging

infringement of parallel national trade marks before courts of different Member

States. Frequent application of the mechanism provided in Article 109 of Regulation

No 207/2009 to resolve cases of lis pendens would, because of such a divergent

approach in Article 97(5) of Regulation No 207/2009 (now Article 125(5) of

Regulation 2017/1001) and Article 5(3) of Regulation No 44/2001 (now Article 7(2) of

Regulation No 1215/2012), be likely, thereby defeating the objective, pursued by

[28] Had the judgment of the Court in AMS Neve been critical to my decision on the

jurisdiction issue I would have invited further submissions from counsel in light of that

judgment. However, since the judgment is not critical to my decision, and because inviting

such submissions would have resulted in delay in issuing this Opinion and in further

expense for the parties, I did not consider it necessary to follow that course.

[29] Ms Pickard submitted that if this court has jurisdiction it ought to decline to exercise

it on the ground of forum non conveniens. England and Wales is another forum of competent

jurisdiction - the defender is domiciled there - and it is the forum which is clearly and

distinctly more appropriate for trying the dispute having regard to the interests of the

parties and the ends of justice (RAB v MIB 2009 SC 58, per the Opinion of the Court

delivered by Lord Eassie at paragraphs 20-21). In the whole circumstances the court should

conclude that England and Wales is the jurisdiction with which the dispute has the more

[30] Ms Pickard had suggested in her note of argument, and Mr Tupper had suggested in

his witness statement, that the availability of specialist intellectual property courts in

England and Wales was a factor pointing to it being a more appropriate forum than

Scotland. However, I understood Ms Pickard’s ultimate position to be that while this

showed there were appropriate courts in England she did not ask me to conclude that the

English courts were better equipped than this court to try the dispute. As she put it, the

[31] Important factors which she founded upon strongly were that the core complaint (as

she saw it) related to the defender’s online use of allegedly infringing signs; that the

activities that resulted in those signs being displayed online all occurred in London; and that

the “core infringing acts” which the pursuer sought to interdict take place in England. The

last feature pointed strongly to England being the appropriate forum (Vetco Gray UK limited

v FMC Technologies Inc [2007] EWHC 540 (Pat), per Mann J at paragraph 27). The marketing

event in St Andrews was not a core aspect of the dispute. Other relevant factors were that

the defender was based in England and that was where it carried out all of its business

activities. It had no presence in or connection with Scotland. There were other proceedings

which had been threatened against the defender by E&R or universities or entities associated

with it. There would be likely to be a degree of commonality between each of the

proceedings - the common thread being that E&R was the official supplier of academic dress

to the various English universities involved. If brought, those proceedings would be likely

to be in England and it was possible - Ms Pickard was careful to put it no higher than that -

that the court could use its case management powers to have all of the actions brought

together. Likewise, if the present dispute was heard in England there would be at least the

possibility of it being joined in those consolidated proceedings.

[32] A key part of the defender’s coordinated response to the various complaints made

against it were its own claims for breach of competition law. The defender intended that

these be pursued in the CAT, and that it would apply for the claims to be heard together. It

would of course be up to the CAT to determine whether any proceedings before it were

English or Scottish proceedings. If most of the parties were English then it seemed more

likely than not that all of the proceedings would be treated as English proceedings, but it

was probably too speculative to explore that matter further at this stage. Alternatively, if

E&R and/or others did bring claims against the defender in the High Court then it would be

open to the defender to bring the competition claims there instead of in the CAT. Litigating

in Scotland would be likely to result in some inconvenience for the defender, their legal

adviser Mr Tupper (who is a sole practitioner based in London), and for the defender’s

witnesses who are all based in England. While Mr Tupper had suggested that the costs of

the proceedings in Scotland might be greater than those which would be incurred if the

present dispute was litigated in England, Ms Pickard’s ultimate position was that costs

ought probably to be treated as a neutral factor. However, if there were parallel proceedings

in England and Scotland there may be some duplication of time and expense.

[33] Mr O’Brien submitted that the relevant principles were set out in Spiliada Maritime

Corp. v Cansulex Ltd (“The Spiliada”) [1987] AC 460 (HL) by Lord Goff of Chieveley. The term

forum non conveniens was potentially misleading, as the test was “not one of convenience, but

of the suitability or appropriateness of the relevant jurisdiction”: p 474E-F. Lord Goff cited

with approval the dictum of Lord Kinnear that “something more is required than mere

practical inconvenience”: Sim v Robinow (1892) 19 R 665 at p 668. The plea will only succeed

“where the court is satisfied that there is some other available forum, having competent

jurisdiction, which is the appropriate forum for the trial of the action, ie in which the case

may be tried more suitably for the interests of all the parties and the ends of justice”: The

[34] It must be remembered that the pursuer has founded jurisdiction as of right: The

Spiliada, p 476F. The defender bears the burden of showing that another forum is not merely

more appropriate, but “clearly or distinctly more appropriate”: The Spiliada, p 477E. Where

the choice is between competing jurisdictions in a federal state, it is readily understandable

that a strong preference should be given to the forum chosen by the plaintiff: The Spiliada,

476H. That observation applied equally where the choice was between different parts of the

UK: Sokha v Secretary of State for the Home Department 1992 SLT 1049, per Lord Prosser at

pp 1053-1054. The focus was on whether the dispute had the most real and substantial

connection with a different forum, having regard to matters such as the availability of

witnesses, the governing law, and the parties’ places of residence: The Spiliada, p 478A-B.

[35] Here, the locations of parties, witnesses and legal advisers were neutral factors.

While litigating in Scotland will involve a degree of inconvenience for the defender, there

would be commensurate inconvenience for the pursuer were it required to litigate in

England. The suggestions that the English courts were better equipped to deal with the

dispute and that the costs involved there would be less than in Scotland were not accepted.

In any case, the question of forum non conveniens did not turn on the relative procedural

advantages of the fora unless substantial justice could not be done in the natural forum:

Lubbe v Cape plc [2000] 1 WLR 1545 (HL), 1554 (Lord Bingham); Vedanta Resources plc v

Lungowe [2019] 2 WLR 1051, [2019] UKSC 20, per Lord Briggs at paragraph 88. The

defender did not suggest that substantial justice could not be done in Scotland.

[36] The defender relied heavily on possible litigation in England and Wales which it said

was being contemplated. Where such a factor was founded upon, the degree to which the

subject matters of proceedings overlapped was relevant, as was the stage which each had

reached: Argyllshire Weavers Ltd v A Macaulay (Tweeds) Ltd (No 1) 1962 SC 388, per Lord

President Clyde at p 400. The fact that no such proceedings have in fact been raised is a

factor tending against the sustaining of the plea: Robinson v Robinson’s Trustees 1930 SC (HL)

[37] Here no other proceedings had been commenced. In so far as it was possible to

ascertain from pre-litigation correspondence, there was no significant overlap between the

issues raised in the present case and the issues which might arise were the other proceedings

to be commenced. The proceedings which the defender envisaged that E&R or universities

may bring would involve different and separate disputes relating to different rights from the

rights upon which the pursuer founds. Likewise, the subject matter of the competition law

proceedings against the pursuer and its subsidiaries would concern different complaints, viz

(i) abuse of a dominant position in the UK market for retail of St Andrews University

undergraduate gowns; (ii) arrangements with E&R which affect trade within the UK market

for the supply of academic dress, specifically at St Andrews; and (iii) unlawful means

conspiracy. The primary focus of the possible competition law proceedings which the

defender had threatened would be on the effect of arrangements between universities and

E&R. In contrast, the issues in dispute in this action relate to such matters as whether the

defender’s actions amount to infringement and/or passing off at all, and (if the defender’s

actions would otherwise infringe) whether it can rely on the descriptive-use defences in

section 11 of the Trade Marks Act 1994. Furthermore, it could not be assumed that any

proceedings before the CAT would be treated as taking place in England and Wales. Under

the Competition Appeal Tribunal Rules 2015, it would be the CAT, not the parties, which

determined whether its proceedings were to be treated as taking place in Scotland or in

England and Wales. It would consider the connecting factors set out in rule 18(3). That

decision would determine the court to which any appeal from the CAT lay, the governing

law, and the available remedies: Merger Action Group v Secretary of State for Business,

Enterprise and Regulatory Reform [2008] CAT 34, at paragraph 3; Competition Act 1998 s

47A(3). The approach focused on connecting factors and on the centre of gravity of the

dispute, rather than questions of convenience: Merger Action Group, supra, at paragraphs

9-10. Here the proposed claim would be directed at the pursuer and its subsidiaries in

relation to their behaviour in connection with academic dress. The centre of gravity of the

dispute was Scotland. So, even if such proceedings were to be brought before the CAT, it

was likely that they would be treated by the CAT as being Scottish proceedings.

[38] The defender placed undue reliance on Vetco Gray UK Limited v FMC Technologies Inc.

The circumstances of that case were plainly distinguishable from the present case. There,

proceedings had been well underway in both Scotland and England and there had been a

very high degree of overlap between the subject matters of the disputes. The disputes

involved patent infringement and the place of infringement was said to be Scotland. The

acts of infringement had nothing to do with cross-border online publication.

[39] In the whole circumstances it simply could not be said that the dispute had a more

real and substantial connection with England and Wales than with Scotland or that England

and Wales was “clearly or distinctly” the more appropriate forum.

[40] It is common ground that the principles underlying the doctrine of forum non

conveniens were conveniently and authoritatively set out by Lord Goff of Chievely in The

Spiliada at pp 474-478. The fundamental principle is, as Lord Kinnear stated in Sim v

“the plea can never be sustained unless there is some other tribunal, having

competent jurisdiction, in which the case may be tried more suitably for the interests

At pp 476B - 478 E of The Spiliada Lord Goff summarised the relevant law:

“In my opinion, having regard to the authorities (including in particular the Scottish

(a) The basic principle is that a stay will only be granted on the ground of forum

non conveniens where the court is satisfied that there is some other available forum,

having competent jurisdiction, which is the appropriate forum for the trial of the

action, i.e. in which the case may be tried more suitably for the interests of all the

burden resting on the defendant is not just to show that England is not the natural or

appropriate forum for the trial, but to establish that there is another available forum

which is clearly or distinctly more appropriate than the English forum. In this way,

proper regard is paid to the fact that jurisdiction has been founded in England as of

(d) Since the question is whether there exists some other forum which is clearly

more appropriate for the trial of the action, the court will look first to see what

factors there are which point in the direction of another forum. These are the factors

which Lord Diplock described, in MacShannon's case [1978] A.C. 795, 812, as

indicating that justice can be done in the other forum at "substantially less

inconvenience or expense." Having regard to the anxiety expressed in your

Lordships' House in the Societe du Gaz case, 1926 SC (HL) 13 concerning the use of

the word "convenience" in this context, I respectfully consider that it may be more

desirable, now that the English and Scottish principles are regarded as being the

same, to adopt the expression used by my noble and learned friend, Lord Keith of

Kinkel, in The Abidin Daver [1984] A.C. 398, 415, when he referred to the "natural

forum" as being "that with which the action had the most real and substantial

connection." So it is for connecting factors in this sense that the court must first look;

and these will include not only factors affecting convenience or expense (such as

availability of witnesses), but also other factors such as the law governing the

relevant transaction (as to which see Credit Chimique v. James Scott Engineering Group

Ltd., 1982 S.L.T. 131), and the places where the parties respectively reside or carry on

(e) If the court concludes at that stage that there is no other available forum

which is clearly more appropriate for the trial of the action, it will ordinarily refuse a

stay; see, e.g., the decision of the Court of Appeal in European Asian Bank A.G. v.

Punjab and Sind Bank [1982] 2 Lloyd's Rep. 356. It is difficult to imagine

(f) If however the court concludes at that stage that there is some other available

forum which prima facie is clearly more appropriate for the trial of the action, it will

ordinarily grant a stay unless there are circumstances by reason of which justice

[41] In the present case England and Wales is a competent forum having jurisdiction by

reason of the defender being domiciled there. However, the pursuer also has jurisdiction as

of right to bring the proceedings in Scotland. The fact that Scotland is the jurisdiction where

the pursuer has chosen to bring the action is a matter to which some weight ought to be

given (Sokha v Secretary of State for the Home Department, supra, per Lord Prosser at p 1054).

However, since the critical question is whether England and Wales is clearly or distinctly a

more appropriate forum for the proceedings than Scotland, the weight given to the

pursuer’s choice cannot be decisive if other factors indicate that the question should be

answered in the affirmative notwithstanding the pursuer’s choice. I turn then to examine

the factors connecting the dispute with each of the two jurisdictions.

[42] In my opinion the subject matter of the action has a very real and substantial

connection with Scotland. The pursuer is a Scottish University which complains that its

trade mark has been infringed, and that its goodwill is being damaged by the defender

passing off goods as being authorised by the pursuer. While the defender does not have a

place of business in Scotland, I consider that on a proper analysis the defender has carried

on and continues to carry on business here. Some of the relevant acts of the defender took

place in St Andrews. While the online advertising was instigated and managed from the

defender’s place of business in London, and that is a relevant connection with England, it

was and is directed to a very material extent to undergraduates who would be in Scotland

when they read the advertising and when they purchased a gown. Any damage to the

pursuer’s goodwill caused by passing off will have been/will be suffered in Scotland.

Similarly, damage caused by the alleged trade mark infringement will have been/will be

[43] Other factors which were discussed appear to me to be neutral. The defender and its

witnesses (including its English solicitor Mr Tupper) will be inconvenienced by the

proceedings being in Scotland, but no more than the pursuer and its witnesses and advisers

would be inconvenienced were the proceedings to be in London. The suggestion that

proceedings in England would be likely to be less expensive for both of the parties was not

pressed by Ms Pickard and I need say no more about it. Had it been pressed I would have

needed a much more detailed comparison of court fees and legal expenses likely to be

incurred in each jurisdiction than I was provided with in order to be able to reach a reliable

and informed view on the matter. In my opinion this court and the High Court in England

and Wales are both well equipped to deal with the subject matter of the action. In any case,

the question of forum non conveniens does not turn on the relative procedural advantages of

the fora unless substantial justice could not be done in the natural forum: Lubbe v Cape plc,

supra, per Lord Bingham at paragraph; Vedanta Resources plc v Lungowe, supra, per Lord

Briggs at paragraph 88. Ms Pickard did not suggest that substantial justice could not be

[44] I come now to possible litigation in England and Wales which the defender says is

contemplated by itself and others. The fact of the matter is that no such proceedings have

been commenced. I am not persuaded by the material placed before me that there would be

a significant overlap between the issues raised in the present case and the issues which

might arise were the other proceedings to come to pass. I agree with Mr O’Brien that the

proceedings which the defender envisages that E&R or universities may bring are likely to

concern issues which are different from the present dispute; and that the subject matter of

the competition law proceedings against the pursuer and its subsidiaries would also be

[45] I do not find Vetco v Gray to be of any real assistance. The circumstances there were

very different from the present case. There were live proceedings in Scotland and in

England, and the action in Scotland had got to the stage of a proof (trial) date having been

fixed. There was a very high degree of overlap between the subject matters of the two

actions. They involved patent infringement, and Scotland was both the place of

infringement and the place where the damage was suffered. The acts of infringement had

nothing to do with cross-border online publication. That was the context in which Mann J

suggested that Scotland was perhaps the only place where an interdict could be granted.

Nevertherless, Ms Pickard relied upon that observation. She submitted that since interdict

was the only remedy which was sought here, and the acts of putting the offending material

on the internet had taken place in England, it followed that England was the only place (or

at the very least the appropriate place) where a remedy of the nature of an

injunction/interdict could be granted. Therefore, of the two possible ways of obtaining rule

3(c) special jurisdiction, the place of the event giving rise to the damage was either the only

[46] In my opinion the submission is not well founded. First, by detaching Mann J’s

observation from its proper context Ms Pickard attaches more significance to it than I

suspect the learned judge intended it to have. Second, as Mr O’Brien highlighted, in

Wintersteiger the claimants had brought an action in the Austrian courts and the remedy

sought was an injunction (paragraphs 13 and 16 of the judgment of the court). For the

purposes of special jurisdiction under Article 5(3) of the Brussels I Regulation the court held

(paragraphs 27 - 29) that the place of the damage was Austria (where the national trade

mark was registered), but that the place of the event giving rise to the damage was Germany

because that was the place where there was activation by the advertiser of the technical

process which gave rise to the online advertisement complained of (paragraphs 34 - 39). The

fact that the place of the event was Germany did not prevent the claimant from opting to

found jurisdiction on the place of the damage in order to bring its claim for injunctive relief

in Austria. Third, it seems to me that the submission conflates the activities which the

pursuer seeks to interdict (infringement of its trade mark and passing off) with the activities

which the court in Wintersteiger ruled were relevant to ascertainment of the place of the

event giving rise to the damage. The court looked to the beginning of the story - advertiser

activation - in order to identify the place of the event. As Professor Adrian Briggs has

observed (Briggs, Civil Jurisdiction and Judgments (6th ed), paragraph 2.206), the court has

tended to favour an interpretation of the event giving rise to the damage which enquires

where the damage causing event has originated. Often, there is more to the story. Here, the

initial activation is not the only matter which the pursuer complains of. Interdict of the

defender against infringement and passing off would prohibit a good deal more than that.

Some of the matters struck at would involve things done in England and some would

[47] In the whole circumstances I am not persuaded that England and Wales is clearly or

[48] I shall repel the defender’s first and second pleas-in-law, and I shall reserve

meantime all questions relating to the expenses of and incidental to the debate. I shall put

the case out by order to discuss further procedure and to consider any motion for expenses

which may be made.

Scottish Court of Session Decisions