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...