Hearing - Practice - Defendant seeking to launch television service called ‘NOW TV’

Starbucks (UK) Ltd v British Sky Broadcasting Group Plc and other companies: ChD (Patents) (Mr Justice Arnold): 29 June 2012

The claim arose regarding a community trademark no 4504891 owned by the claimant.

The figurative mark comprised of the word ‘now’ in lower-case letters with a particular design around the ‘o’. In March 2012, the respondent company announced that it intended to launch an internet television service under the name ‘NOW TV’. The claimant commenced proceedings, claiming that the use of that name would infringe its trademark and amount to passing off. Proceedings were also commenced in the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

The claimant applied to have the proceedings expedited. The claimant cross-applied to have the proceedings stayed. The claimant submitted that there were three grounds individually or cumulatively amounting to special grounds for the purposes of article 104(1) of Council Regulation (EC) 207/2009 (on the community trademark), so as to justify refusing the grant of a stay.

First, the defendant had only commenced the proceedings before OHIM after receipt of the claimant’s letter before action, and after requesting an extension of time in which to respond to the letter before action and agreeing not to take any point on delay. Second, that it would be wrong to delay the resolution of the passing-off claim as a result of a stay of the community trademark proceedings. Third, that the matter was one requiring urgent resolution, and that the only forum in which resolution of all the disputes would be possible was the court.

It further contended that expedition was warranted in the instant case, for a number of reasons: (i) the defendant intended to launch its device soon; (ii) if vindicated, the claimant would not be able to exploit its rights once the mark had become indelibly associated with the defendant’s service; (iii) other related companies could expand their services in the near future; (iv) it was in the interest of consumers that confusion be avoided; and (v) it was in the defendant’s own interests to know where it stood on the issue as quickly as possible. The application would be allowed.

(1) Taken cumulatively, the grounds relied upon by the claimant did constitute special grounds within article 104(1) of the regulation. So far as the first ground was concerned, it was relevant to take into account the fact that the application before OHIM had only been instituted by the defendant in direct response to the letter before action and only after requesting an extension of time, and agreeing not to take a point on delay, without revealing that the defendant had been contemplating the possibility of making such an application.

The effect of the defendant’s application to OHIM, having regard to the length of time the proceedings in OHIM would take, would be substantially to delay the claimant’s claims. In the circumstances, that would amount to special grounds, at least viewed in combination with other factors (see [62] of the judgment).

(2) There was good reason for expedition. It was clear from the defendant’s own evidence that it intended to launch its device soon. Even if the claimant’s trademark was vindicated at some point in the future, that would be of no use to it, as if would not be able to exploit those rights once the mark had become indelibly associated with the defendant’s service. It was possible that other related companies could expand their services in the near future, and it was in the interest of consumers that confusion between the mark be avoided. Further, it was in the defendant’s own interests to know where it stood on the issue as quickly as possible.

Furthermore, considering the potential effect of acceding to the application on third parties, the degree of expedition sought was not so rapid as to be unduly prejudicial to other litigants. In the circumstances, the evidence suggested that the defendant would be ready for trial in October 2012 (see [67]-[71], [75], [76] of the judgment). A stay would be refused and expedition granted as sought by the claimant (see [78] of the judgment).

Michael Silverleaf QC (instructed by Dechert) for the claimant; Geoffrey Hobbs QC and Guy Hollingworth (instructed by SJ Berwin) for the defendants.