Court of Appeal - Threats Action

IP Bulletin - June 2011

Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL, [2011] EWCA Civ 618, 24 May 2011

The Court of Appeal has allowed an appeal in an action for threats under section 21 of the Trade Marks Act 1994.

The dispute concerned the trade mark "Best Buy". The claimants, Best Buy, planned to open consumer electronics shops in the UK and other EU countries under the Best Buy name, which the first claimant had used in the US. The defendant, a Spanish corporation, owned a number of figurative CTMs and national registered trade marks including the words "Best Buy".

A company related to the claimants, BBES, applied to register "Best Buy" as a CTM. The defendant opposed based on its trade marks. The applicant commenced a revocation action against one of the defendant's trade marks for non-use.

In a letter from Clifford Chance S.L. Abogados, acting for the defendant, the first part of the letter stated that use by BBES represented "a conflict with the intellectual property rights duly registered by [their] client in Spain and Europe which would entitle it to take the appropriate legal action to defend its interests" and "would cause confusion and lead to an unacceptable association with [their] client's products causing irreparable and irreversible damage which would undoubtedly entail the cessation of its activity".

The last three paragraphs stated:

"If, taking into account the above, [BBES] were to remain interested in using the BEST BUY trademark in Europe my client would be prepared, taking up the proposal made by your client in your facts of 28 August 2008, to reach a negotiated solution which would enable your client to do so while at the same time compensating my client for the cessation of its activity that this would undoubtedly entail.

Until a negotiated solution is reached, we hereby request that your client refrain from using the BEST BUY trademark in Europe, issuing any press articles or making any announcements of its imminent activities in Europe (news that has already caused confusion and concern among my client's customers).

In order to ensure that my client is able to protect its rights in a proper fashion, we hereby request that, within a term of fifteen (15) calendar days as of the date of receipt of this letter, you reply to us in writing confirming (i) [BBES's] willingness to start a negotiation process with my client in order to attempt to find a negotiated solution to the conflict; or (ii)...