Praesidiad Holding BVBA & Anor v Zaun Limited
[2024] EWHC 1549 (Pat)
Seraphine Limited v Mamarella GmbH
1 March 2024
[2024] EWHC 425 (IPEC)
High Court
Two companies argued about who should decide a design-copying lawsuit. A judge ruled that the lawsuit should stay in England, based on an agreement the companies had made. The judge also said one of the companies needed to provide better evidence to support its case.
Key Facts
- •Seraphine Limited (Claimant) and Mamarella GmbH (Defendant) had a trading relationship that ended in 2022 due to alleged unregistered design right infringement by Mamarella.
- •Seraphine initially served Mamarella in Germany by post, then again via the Hague Convention.
- •Mamarella applied to set aside service and stay proceedings, citing jurisdictional issues.
- •The central issue was whether Seraphine could serve proceedings outside the jurisdiction without court permission under CPR 6.33(2B)(b).
- •The 2021 terms document, containing an exclusive jurisdiction clause, was the focus of the jurisdictional dispute.
- •Mamarella argued the exclusive jurisdiction clause didn't apply because no 'Contract' (as defined in the document) existed.
- •Seraphine argued the clause applied and also sought to rely on earlier (2015 and 2019) terms and conditions.
Legal Principles
Test for a 'good arguable case' for service out of the jurisdiction without court permission.
Four Seasons Holdings Inc v Brownlie [2017] UKSC 80, Goldman Sachs International v Novo Banco SA [2018] UKSC 34, Kaefer Aislamientos SA de CV v AMS Drilling Mexico SA de CV [2019] EWCA Civ 10
Construction of contractual jurisdiction clauses.
None explicitly cited, but derived from interpretation of clause 25 of the 2021 terms document.
Burden of proof in jurisdictional challenges.
Kaefer Aislamientos SA de CV v AMS Drilling Mexico SA de CV [2019] EWCA Civ 10
Requirements for pleading design right ownership (natural persons as designers).
Article 14 of Regulation 6/2002
Outcomes
Seraphine was entitled to serve proceedings out of the jurisdiction without court permission under CPR 6.33(2B)(b), based on the 2021 terms.
The court found Seraphine had a good arguable case that subsequent orders by Mamarella were 'Orders' under clause 2, creating contracts incorporating the exclusive jurisdiction clause.
Seraphine's application to rely on 2015 and 2019 terms and related designs was denied.
Seraphine failed to provide sufficient evidence that orders placed via the TradeWeb platform before 27 April 2021 incorporated those terms.
Mamarella's application for a stay of proceedings was withdrawn or deferred.
Mamarella withdrew its forum non conveniens argument and agreed to defer its case management stay application pending the outcome of parallel German proceedings.
Seraphine must amend its Particulars of Claim to address deficiencies in design right ownership pleading.
The court noted the need for Seraphine to properly identify designers and explain its basis for ownership of the design rights.