Nvidia’s attempt to nix an EU trademark infringement sueball by using the English courts has failed after a judge said a lawyer’s letter from Germany could not be regarded as a threat to sue in London.
Hardware Labs Performance Systems Inc, a Philippines-based maker of computer cooling systems, instructed a German lawyer to send a letter to Nvidia’s California head office threatening to bring legal proceedings.
The impending sueball could have been batted away, Hardware Labs said in its letter, if Nvidia stopped using its registered trademarks GTX, GTS and GTR.
Nvidia promptly took matters to the EU Intellectual Property Office (EUIPO) on the grounds that Hardware Labs’ registered trademarks were invalid. Nvidia’s GeForce range includes gaming graphics cards designated GTS, GTX and GTR, among many others.
Nvidia also filed suit in the Chancery Division of the High Court against Hardware Labs, seeking an injunction against the Philippines company and damages for what it described as an “unfounded threat” to sue within England and Wales.
Their argument for the case to have jurisdiction in the London courts said that because the letter was sent in English by an EU-based lawyer and made specific reference to Nvidia’s EU operations, it could be argued to apply to the graphics cards maker’s UK subsidiaries, and thus English law could be applied to have the threat squashed flat.
Arguing for Nvidia’s efforts against it to be struck out, Hardware Labs argued in court that its letter did not amount to a threat to sue in England because, having been sent by a German lawyer in Germany and with detailed references to German law, it amounted to a threat to sue only within Germany.
Agreeing with Hardware Labs and summarily dismissing the letter claim, Mr Justice Mann said: “The threats letter does not contain a threat to sue in the UK, and [this] is sufficiently clear at this stage without the need for a trial.”
Nvidia had also filed for a declaration of non-infringement of Hardware Labs’ trademarks. It then applied for its own case to be stayed, on the grounds that if its EUIPO action succeeded there would be no infringing trademarks for the declaration to be applied to. A suspicious Mr Justice Mann, however, said:
No explanation is given of why all this was not equally true at the time of the issue of the proceedings and, if it was true, why the proceedings were issued in the first place. It is hard to avoid the conclusion that commercial litigation tactics are heavily in play here (on both sides) and they have not been disclosed to the court. The parties are adopting stances which are contrary to what one would expect. It would have been more natural for the defendant to be seeking a stay, and for the claimants to be stating a wish to continue with their English proceedings
He added: “It is very odd for the claimants to be seeking a stay of their own proceedings in these circumstances, and I am not wholly satisfied that I have been told their real reason. They have not, for example, said they now realise that they made a mistake in starting their current proceedings. Nor have they explained the volte face between what is said in the Particulars of Claim (which refer to the EUIPO proceedings) and what is now said.”
A further application by Hardware Labs for the case to be transferred to the Intellectual Property Enterprise Court was refused. ®