Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Ors [2012] EWHC 1842 (Ch) (29 June 2012)

Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Ors [2012] EWHC 1842 (Ch) (29 June 2012)

The cumulative effect of Sky's timing in filing the OHIM invalidity application, the evidential overlap with the passing off claim, and the need for urgent resolution constitute special grounds under Article 104(1) of the CTM Regulation. Therefore, a stay is refused and expedited trial is granted.

Citation
[2012] EWHC 1842 (Ch)
Parties
Claimant: Starbucks (UK) Limited; Defendant: British Sky Broadcasting Group PLC; Defendant: British Sky Broadcasting Limited; Defendant: Sky IP International Limited
Jurisdiction
England and Wales
Judgment Date
29 June 2012
Procedural Posture
Intellectual Property Dispute (trade Mark Infringement and Passing Off) / Interlocutory Applications (expedited Trial and Stay)
Outcome
Stay of proceedings refused; expedited trial granted.
Legal Topics
Trade Mark Infringement, Passing Off, Community Trade Mark Regulation, Expedited Trial, Stay of Proceedings
Intellectual Property European Union Law Trade Mark Infringement Passing Off Community Trade Mark Regulation Expedited Trial Stay of Proceedings

Case Brief

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Parties

Starbucks (UK) Limited

Claimant

British Sky Broadcasting Group PLC

Defendant

British Sky Broadcasting Limited

Defendant

Sky IP International Limited

Defendant

Procedural Posture

Intellectual Property Dispute (trade Mark Infringement and Passing Off) / Interlocutory Applications (expedited Trial and Stay)

Legal Issues

  1. 1 Whether proceedings should be stayed under Article 104(1) of the CTM Regulation due to parallel OHIM invalidity application
  2. 2 Whether expedited trial is warranted
  3. 3 Whether Starbucks has a real prospect of success on trade mark infringement and passing off claims

Ratio Decidendi

The cumulative effect of Sky's timing in filing the OHIM invalidity application, the evidential overlap with the passing off claim, and the need for urgent resolution constitute special grounds under Article 104(1) of the CTM Regulation. Therefore, a stay is refused and expedited trial is granted.

Court Disposition

Stay of proceedings refused; expedited trial granted.

Orders

  • No stay of Community trade mark proceedings under Article 104(1)
  • Expedited trial ordered for October 2012