An IP Case from my Alma Mater - University of St Andrews v Student Gowns Ltd
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Jane Lambert
Outer House, Court of Session (Lord Doherty) The University Court of the University of St Andrews v Student Gowns Ltd [2019] CSOH 86, [2019] ScotCS CSOH_86
This was a challenge to the jurisdiction of the Scottish courts by Student Gowns Ltd. ("Gowns"). Gowns is an English company carrying on business from premises in London. In 2018 it marketed a red gown to undergraduates of the United College of St. Salvator and St Leonard in the University of St. Andrews through its website and on Google and Amazon and a roadshow in St Andrews. The University Court of the University of St Andrews ("the Court"), the governing body of the University and proprietor of the registered trade marks UNIVERSITY OF ST. ANDREWS, ST ANDREWS UNIVERSITY and THE UNIVERSITY OF ST. ANDREWS, brought proceedings against Gowns in the Outer House of the Court of Session for infringement of those marks and passing off.
In its defence, Gowns admitted that it had sold 89 gowns in 2018, 59 in Scotland and the remainder over the internet and that 14 of the remaining 30 were delivered to addresses outside Scotland. Gowns contended that the pages of its website were not specifically marketed, aimed or directed at customers in Scotland and that the Court of Session was neither the natural nor the appropriate forum for the resolution of the dispute.
The challenge to the jurisdiction of the Scottish Courts came on before Lord Doherty for "a preliminary proof before answer". That procedure appears to be equivalent to the procedure for disputing the court's jurisdiction provided by Part 11 of the Civil Procedure Rules. At paragraph [48] of his opinion, Lord Doherty repelled Gowns's pleas in law.
Referring to paragraph 3 (c) of Schedule 4 to the Civil Jurisdiction and Judgments Act 1982 and the judgment of the Court of Justice in Case 21/76 Handelskwekerij G. J. Bier BV v Mines de Potasse d'Alsace SA [1977] 1 CMLR 284, ECLI:EU:C:1976:166, [1976] EUECJ R-21/76, EU:C:1976:166, [1978] QB 708, [1976] ECR 1735, [1977] 3 WLR 479, his lordship said at paragraph [21] that it was 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.
As for passing off, the place of the damage was the place where the goodwill concerned subsists and where it is protected by law. The goodwill which the Court claims was injured by passing off subsists in Scotland and it is protected by the Scots common law relating to passing off. Referring to Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH 2012] EUECJ C-523/10, ECLI:EU:C:2012:220, EU:C:2012:220, [2012] WLR(D) 117, [2013] Bus LR 150, the judge said that with regard to trade mark infringement. the place of the damage was the place where the trade mark is registered. As the trade mark is registered in the UK each of the jurisdictions of the UK is a place of damage. In the learned judge's opinion, Scotland has a very close and strong connection with the dispute. A very substantial number of the students to whom the online advertising had been directed were in Scotland. Most of the students who buy undergraduate gowns do so after they arrive in Scotland. It was fair to say that Gowns's online advertising was in fact directed to a very material extent to students who would be in Scotland when they made a purchase. Also, two of Gowns's employees had visited St Andrews where they distributed flyers and held a roadshow in a pub In respect of those activities, not only was the place of the damage in Scotland, but the event giving rise to the damage also took place there. Accordingly, each of the two possible bases for founding jurisdiction under paragraph 3 (c) was satisfied.
As to whether or not Scotland was the most appropriate forum, the Court of Session had discussed the plea of forum non conveniens in Sim v Robinow w (1892) 19 R 665 at page 668
“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 of all the parties and for the ends of justice.”
That view was endorsed by the House of Lords in Spiliada Maritime Corp. v Cansulex Ltd (“The Spiliada”) [1987] 1 FTLR 103, [1987] ECC 168, [1987] 1 Lloyd's Rep 1, [1986] 3 WLR 972, [1987] AC 460, [1986] UKHL 10, [1986] 3 All ER 843.
At paragraph [41], Lord Doherty directed himself as follows:
"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."
He took into account the place where the alleged wrongdoing and damage occurred which was Scotland, the location of the parties, the convenience of witnesses and legal advisors, the readiness of the courts of England and Scotland to deal with these matters and the possibility of proceedings in England under s.18 of the Competition Act 1998. Balancing all these factors, his lordship was not persuaded that England and Wales was clearly or distinctly a more appropriate forum than Scotland.
I took a particular interest in this case because St Andrews is one of my almae matres as it was Andrew Lang's. In the week before lectures began, I was told that students had been required to wear gowns by an ancient Scottish statute for suppressing "vaging and vice." Vice was clear enough but nobody seemed to know the meaning of "vaging". Gowns were worn at services in St Salvator's chapel after which the congregation walked along the pier and back in memory of James Honey, a student of St Andrews who died after trying to rescue shipwrecked sailors. We also wore gowns for dinner on high table, exams and other special events but rarely for anything else. I am agreeably surprised that the tradition continues to this day.
"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."
He took into account the place where the alleged wrongdoing and damage occurred which was Scotland, the location of the parties, the convenience of witnesses and legal advisors, the readiness of the courts of England and Scotland to deal with these matters and the possibility of proceedings in England under s.18 of the Competition Act 1998. Balancing all these factors, his lordship was not persuaded that England and Wales was clearly or distinctly a more appropriate forum than Scotland.
I took a particular interest in this case because St Andrews is one of my almae matres as it was Andrew Lang's. In the week before lectures began, I was told that students had been required to wear gowns by an ancient Scottish statute for suppressing "vaging and vice." Vice was clear enough but nobody seemed to know the meaning of "vaging". Gowns were worn at services in St Salvator's chapel after which the congregation walked along the pier and back in memory of James Honey, a student of St Andrews who died after trying to rescue shipwrecked sailors. We also wore gowns for dinner on high table, exams and other special events but rarely for anything else. I am agreeably surprised that the tradition continues to this day.
Anyone wishing to discuss this article, jurisdiction and choice of forum, trade marks, passing off or St Andrews institutions generally can call me on 020 7404 5252 during office hours or send me a message through my contact form.
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