Community Trade Mark Owners Take Note

In a recent decision, the Court of Appeal has upheld two separate High Court decisions concerning parallel Community Trade Mark (CTM) infringement proceedings.1

Basic facts

In March 2012, BSkyB announced that it was going to launch a new internet television service under the name "NOW TV". This prompted two almost immediate claims for trade mark infringement.

The first was by Starbucks (HK) Ltd, not the famous coffee brand but a Hong Kong television service provider, who owned a CTM comprising "now" for various goods and services including television broadcasting.

The second was by EMI (IP) Ltd, a company within the famous EMI record group, who owned a CTM for the mark "NOW" for goods and services which included sound and audio-visual recordings (used for the NOW THAT'S WHAT I CALL MUSIC! brand).

Following separate letters before action from Starbucks and EMI's solicitors, BSkyB applied to the Offie for Harmonisation of the Internal Market (OHIM) for the cancellation of Starbucks and EMI's CTMs.

Proceedings were issued by Starbucks and EMI shortly after notice of the OHIM applications. Starbucks sought a final injunction, damages and an accelerated trial. EMI sought a final injunction, an interim injunction, damages and an accelerated trial.

In both actions, BSkyB countered with an application that the proceedings be stayed pending the outcome of its applications to OHIM to invalidate Starbucks and EMI's CTMs. This was based on Article 104(1) of the CTM Regulations (207/209/EC), which says that a CTM Court (which includes the High Court) shall stay an infringement action where the validity of CTM is already in issue before another CTM Court or the subject of a pre-existing application before OHIM, unless there are special grounds.

At first instance, Arnold J considered that there were special grounds for the Starbucks case to continue and for there to be an accelerated trial. DJ Baldwin QC considered otherwise in the EMI case and ordered there to be a stay pending the outcome of OHIM.

BSkyB appealed the Starbucks case and EMI appealed against DJ Baldwin QC's decision, both on the question of the Judges' interpretation of special grounds under Article 104 (1) of the CTM Regulations.

The appeals

Special grounds

The Court of Appeal noted that there was very little authority on the meaning of "special grounds" and the approach that should be taken by a CTM Court on an application for a stay pursuant to Article 104 (1).

It did, however, set out...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT