The Maltese Court, acting as the Community Trade Mark Court under Council Regulation EC 207/2009 (otherwise referred to as the Community Trade Mark Regulation), was called upon to decide whether injunctive relief was appropriate in relation to the contested use of the word ‘Candy’ by Team Lava LLC.

In effect, King.com, which is the registered proprietor of various Community Trade Marks (‘CTMs’) for its mobile application games, (such as the popular ‘Candy Crush’), sought to obtain a precautionary European-wide injunction against Team Lava. The basis for this action arose due to the use by the defendant (Team Lava) of the word ‘Candy’ in connection with its own mobile application games (including, in particular, ‘Candy Blast Mania’).

With that in mind, King.com resorted to the right prescribed under Article 103 of the Community Trade Mark Regulation (‘CTM Regulation’), which provides that:

 “Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter.”

Accordingly, King.com requested that the Maltese Court issue a pan-European injunction so as to prevent Team Lava from continuing to employ the word ‘Candy’ in its signs. In so doing, King.com based its application on the fact that it had registered various Community word and figurative marks with regard to its ‘Candy Crush’ and ‘Candy Crush Saga’ games. On that note, specific reference was also made to the registration held by the claimant (King.com) in relation to the word mark ‘Candy’.

GANADO Advocates, representing Team Lava, replied to the application by observing, inter alia, that the injunctive relief sought by King.com was a Community measure derived from the CTM Regulation. As a result, the ensuing argument maintained that the Maltese Court, herein acting as a Community Trade Mark Court, was precluded from handling the application purely as a matter of domestic law. Instead, the Court was required to apply the provisions and principles underpinning the Community measures which are implemented for the purposes of enforcing Intellectual Property (‘IP’) rights. Thus, the relevant legislation in the context of these proceedings was held to be Directive 2004/48/EC (that is, the Directive on the Enforcement of Intellectual Property Rights).

Furthermore, the determining provision of the Directive to this case was said to be Article 3; which lays down the general criteria to be applied in implementing the Community enforcement provisions concerning IP rights. In that regard, the Directive on the Enforcement of Intellectual Property Rights has been transposed into Maltese Law by virtue of Chapter 488 of the Laws of Malta.

Even though Article 3 of the Directive was not transposed directly into Chapter 488, GANADO submitted that the principles enshrined in Article 3 reflect the spirit of the correct application of the Directive. The significance attached to this proposition was derived from the relationship between the preceding legal instrument and Article 103 of the CTM Regulation. As such, GANADO noted that the Directive provides the basis through which applications made under Article 103 may be given effect by domestic courts acting as the Community Trade Mark Courts. Therefore, the resultant contention maintained that Article 3 should be applied irrespective of whether the foregoing provision has found its place in the local legislation or otherwise.

In that vein, GANADO successfully argued that the principles of proportionality and reasonableness ought to be given weight by the Court when deciding upon the merits of King.com’s request for the issuing of a pan-European injunction. In so doing, the above claim received welcome support through the expert legal opinion of Mr. Roger Wyand QC.

The submissions to the Court emphasised that injunction proceedings were only filed several months after the date on which Team Lava launched its mobile application game. In addition, prime consideration was also afforded to the lack of evidence of any financial prejudice which King.com had incurred through the entry of Team Lava’s games onto the market. This was then juxtaposed with the financial prejudice that the latter company would potentially suffer in the event of a Court order to cease using the contested marks. The implications of such a decision would have obliged Team Lava to remove the games using those marks from the market; and re-launch them under a different name with the consequent risk of losing their following. In view of above, GANADO claimed that an injunction at this stage would have constituted a disproportionate and unreasonable measure.

The Maltese Court1upheld this line of argumentation which is in accordance with the approach adopted by other courts in the leading European IP jurisdictions. As a result, this judgement represents the first of its kind to have been delivered by the Maltese judiciary. In this manner, GANADO believes that the Maltese Courts have displayed a deep understanding of the principles that should be applied in order to ensure an effective enforcement of IP rights. Moreover, it is equally considered that the approach undertaken in this case has set the proper bar for IP rights-holders attempting to enforce their respective rights within the Maltese Courts.  In closing, the effects of this judgement extend beyond CTM protection since the IP Enforcement Directive applies to every action concerning the enforcement of IP rights on the basis of Community legal instruments.

By Paul Micallef Grimaud and Philip Formosa

Paul leads the Intellectual Property, Media, Entertainment and Technology (IP & MET) practice at GANADO Advocates. Together with Dr. Louis Cassar Pullicino, he represented TeamLava LLC in the mentioned proceedings. Philip is a member of GANADO’s IP & MET team.

Mills & Reeve LLP were the instructing solicitors.

 


1 Warrant no 224/2015EG, in the names of “King.com Limited vs Advocate Dr. Mark Mifsud Cutajar and L.P. Alison Borg noe, as substituted by Advocate Doctor Louis Cassar Pullicino noe” decided on 30 March 2015.