Seraphine Limited v Mamarella GmbH: High Court Examines Service Out of Jurisdiction and Contract Construction

Citation: [2024] EWHC 425 (IPEC)
Judgment on

Introduction

In the case of Seraphine Limited v Mamarella GmbH [2024] EWHC 425 (IPEC), the High Court of Justice, Business and Property Courts of England and Wales, Intellectual Property Enterprise Court (ChD) considered issues relating to service out of jurisdiction, the construction of contracts, and jurisdiction clauses within such contracts. The Deputy Judge, Michael Tappin KC, provided a detailed evaluation of the contractual terms and the circumstances surrounding the service of proceedings in an international context.

Key Facts

Seraphine Limited (the Claimant) previously enjoyed a trading relationship with Mamarella GmbH (the Defendant), where the latter purchased maternity clothing for resale from the former. This relationship terminated after allegations by Seraphine that Mamarella was infringing its unregistered design rights. Seraphine commenced proceedings against Mamarella and served the proceedings without permission from the court—firstly by post, which was contested, and then correctly under the Hague Convention.

The central issue was whether Seraphine was entitled to serve proceedings out of the jurisdiction without the court’s permission. The resolution hinged on whether a “Contract” as defined by the terms of sales previously agreed upon by the two parties existed, which would include an exclusive English jurisdiction clause.

The case applied several key legal principles:

  1. Service Out of Jurisdiction: Under CPR 6.33(2B)(b), the claimant may serve a claim form outside the United Kingdom if a contract contains an English jurisdiction clause.

  2. Good Arguable Case Test: Established by the Supreme Court in the cases of Four Seasons Holdings Inc v Brownlie [2017] UKSC 80 and further explained in Goldman Sachs International v Novo Banco SA [2018] UKSC 34 and Kaefer Aislamientos SA de CV v AMS Drilling Mexico SA de CV [2019] EWCA Civ 10. The ‘good arguable case’ requires (i) a plausible basis for application of the jurisdictional gateway, (ii) a view on the available material if reliable, and (iii) if no reliable assessment can be made, a plausible evidential basis exists if contested.

  3. Contract Construction: Interpretation of the contract’s terms, especially where the service of proceedings and jurisdiction clauses are concerned, is vital to ascertain whether service out of jurisdiction was justified.

  4. Design Rights: The claimant must clarify the ownership of unregistered design rights, particularly delineating that only natural persons can be designers and how the claimant claims ownership, either through employment or else.

Outcomes

The court determined the following:

  • Service of Proceedings: Seraphine had a ‘good arguable case’ that the later orders placed by Mamarella were indeed “Orders” under the contract, incorporating the terms and giving rise to a “Contract” with an exclusive English jurisdiction clause, allowing Seraphine to serve out of jurisdiction without permission under CPR 6.33(2B)(b).

  • Invalid Service Arguments: The initial service by post was deemed irrelevant to costs due to successful subsequent service under the Hague Convention.

  • Contractual Terms: The court did not accept Seraphine’s argument regarding the validity of the 2015 and 2019 terms for lack of evidence and thus did not permit amendments to their claim relating to these terms.

  • Jurisdiction Clause: Seraphine’s entitlement to serve these proceedings out of jurisdiction rested upon the contractual wording that integrated an exclusive English jurisdiction clause for any claims or matters arising under the contract.

  • Stay of Proceedings: Mamarella withdrew its application for a stay on the basis of forum non conveniens, but retained the option to restore the stay application depending on the outcome of related proceedings in Germany.

Conclusion

The Deputy Judge’s analysis underscored the importance of clear contractual terms and highlighted the necessity of proving a ‘good arguable case’ when serving out of jurisdiction. In cases involving international service of proceedings and interpretation of jurisdiction clauses, the clarity of contractual negotiations and terms is essential. The exclusion of the 2015 and 2019 terms due to insufficient evidence illustrates the need for claimants to present a solid basis for asserting contractual rights when seeking to serve proceedings internationally.

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