Stay granted on trade mark and passing off claims to avoid risk of irreconcilable judgments in cross-border dispute

The Court of Appeal has dismissed an appeal against the High Court’s decision to set aside service of proceedings on a company based outside Ireland relating to alleged breach of a co-existence agreement concerning trade marks. The court affirmed that the plaintiff failed to show Ireland was the appropriate forum for that contractual claim, particularly given the absence of evidence on comparative convenience and ongoing proceedings between the parties in another jurisdiction. On the trade mark infringement and passing off actions, the Court of Appeal overturned the High Court’s stay based on the EU Trade Mark Regulation, instead granting a stay under the Brussels Recast Regulation to prevent the risk of inconsistent outcomes with ongoing litigation in Germany. The court found the core dispute concerned rights under a long-standing agreement, with proceedings already under way elsewhere, and emphasised that a stay was necessary until the foreign proceedings concluded, despite the Irish dimension to the claims.