Interlocutory - Damages not appropriate remedy

EMI (IP) Ltd v British Sky Broadcasting Group plc: Chancery Division (Mr John Baldwin QC (Sitting as a Deputy Judge of the Chancery Division)): 25 June 2012

In March 2012, the defendant companies announced an intention to launch an online TV service under and by reference to the designation 'NOW TV'. In April 2012, the defendants made an application to the Community Trade Marks Office to remove the claimant companies’ community trademark 7,153,505 for the word mark 'NOW' (the CTM) from the register (the OHIM application).

In May 2012, the claimants commenced proceedings for trademark infringement and passing off, relying on the CTM and the goodwill built up in the name NOW by reason of the promotion and sale of compilation albums. The claimants sought interim injunctive relief to restrain the defendants from using the name NOW TV or a logo in relation to internet TV services. They contended that there was plainly an arguable case of infringement and they would suffer uncompensatable and irreparable damage to their registered rights unless injunctive relief was granted. The claimants further sought an order for an expedited trial. The defendants resisted both applications and sought an order staying the action pending the outcome of the OHIM application.

They contended that there was no arguable case of infringement and, in relation to the balance of convenience, they contrasted the certainty of real and substantial damage to themselves with the speculative nature of any loss to the claimants. The claimants contended special grounds for the continuation of the proceedings were established.

It fell to be determined: (i) whether an interim injunction should be ordered; (ii) whether an expedited trial should be ordered; and (iii) whether a stay should be ordered. The Civil Procedure Rule and article 104 of Council Regulation (EC) 207/2009 (on the Community trademark) were considered.

The court ruled: (1) The interim injunctive relief would be refused. The court was not satisfied that there had not been a serious issue to be tried in connection with the allegation of trademark infringement. However, there had been no certainty of very substantial damage of the kind for which money could not compensate (see [10], [13], [17] of the judgment).

(2) The claimants had not demonstrated a pressing need for the matter to be heard sooner rather than later. The court had not been satisfied that the claimants had made out their case for expedition and, but for the question of stay, the action should proceed in accordance with the timetable set out in the CPR (see [21] of the judgment).

(3) Article 104 of the Regulation would only permit a Community Trade Mark Court to continue with infringement proceedings when the validity of the relevant community trademark had already been in issue before another Community Trade Mark Court or at the Community Trade Marks Office if there had been ‘special grounds’ for doing so (see [28] of the judgment).

The grounds relied on by the claimants for the continuation of the proceedings taken individually or as a whole had not come close to what the court apprehended to be ‘special grounds’. The right order would be to stay the claimants' registered trademark proceedings pending the outcome of the OHIM application to invalidate the relevant mark (see [32], [36] of the judgment).

Roger Wyand QC and Anna Edwards-Stuart (instructed by Bird & Bird LLP) for the claimants; Geoffrey Hobbs QC and Guy Hollingworth (instructed by SJ Berwin LLP) for the defendants.