Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Ors

Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Ors

The cumulative effect of Sky's timing in applying to OHIM after requesting an extension, the risk of substantial delay to Starbucks' claims, the overlap with the passing off claim, and the need for urgent resolution constitute 'special grounds' under Article 104(1) to refuse a stay. Further, there is good reason for expedition given the imminent launch and risk to goodwill, and no undue prejudice to Sky or other litigants.

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 (trade Mark and Passing Off) / Interlocutory Applications: Application for Expedited Trial by Claimant and Application for Stay by Defendants
Outcome
Stay refused; expedited trial granted.
Legal Topics
Trade Mark Infringement, Passing Off, Community Trade Mark Regulation, Expedited Trial, Stay of Proceedings
Intellectual Property Civil Procedure 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 (trade Mark and Passing Off) / Interlocutory Applications: Application for Expedited Trial by Claimant and Application for Stay by Defendants

Legal Issues

  1. 1 Whether proceedings should be stayed under Article 104(1) of the Community Trade Mark Regulation due to parallel OHIM invalidity proceedings
  2. 2 Whether there are 'special grounds' to refuse a stay under Article 104(1)
  3. 3 Whether the case merits an expedited trial

Ratio Decidendi

The cumulative effect of Sky's timing in applying to OHIM after requesting an extension, the risk of substantial delay to Starbucks' claims, the overlap with the passing off claim, and the need for urgent resolution constitute 'special grounds' under Article 104(1) to refuse a stay. Further, there is good reason for expedition given the imminent launch and risk to goodwill, and no undue prejudice to Sky or other litigants.

Court Disposition

Stay refused; expedited trial granted.

Orders

  • Defendants' application for a stay of the Community trade mark proceedings is refused.
  • Claimant's application for an expedited trial is granted.