Michael Edenborough KC and Stephanie Wickenden have successfully represented Crafts Group in their appeal to the Court of Appeal in Crafts Group LLC v MS Indeutsch International [2024] EWCA Civ 87.

This long-running dispute concerns trade mark rights and goodwill in patterned knitting and crochet needles. Crafts Group instigated invalidity proceedings of the Defendants’ EU trade mark in the EU IPO in 2013 which, owing to multiple appeals and remissions, remain ongoing and are expected to last in the region of a further 5 years. In 2015, Knit Pro issued two Amazon takedown requests in respect of Crafts Group's products. Crafts Group claimed for relief for unjustified threats of trade mark proceedings in 2020, prior to the departure of the UK from the EU. By the time the Defence and Counterclaim was issued, the UK had left the EU.

Knit Pro counterclaimed for infringement of the challenged EU trade mark and sought a stay of the entirety of the UK proceedings pending the determination of its invalidity. Crafts Group denied the UK Court had any jurisdiction to hear the counterclaim under the EU Trade Mark Regulation, and resisted the stay. At first instance, HHJ Hacon imposed a stay of the matters relating to the EU trade mark under Art 132 of the EUTMR, and stayed the remainder of the proceedings under the Court's discretionary power. Following a supplementary judgment and permission to appeal being granted, the EU TM counterclaim was withdrawn but Knit Pro still maintained that the remainder of the proceedings should still be stayed. The Court of Appeal granted the order sought by Crafts Group, staying only the validity counterclaim in respect of the UK comparable mark (EU).

The Court of Appeal's judgment can be found here.