Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ors (Rev 2)

Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ors (Rev 2)

The Court held that the presumption in favour of a stay under Article 104(1) is strong and only rare, exceptional factual circumstances specific to the case can constitute special grounds. Urgency arising from imminent launch and inability to protect interests by interim relief may justify refusal of a stay, but reactive OHIM applications and passing off claims are not relevant. In Starbucks, exceptional urgency justified refusal of a stay; in EMI, lack of urgency and definite plans justified granting a stay.

Parties
Appellant: Starbucks (HK) Limited; Appellant: EMI (IP) Limited; Respondent: British Sky Broadcasting Group PLC
Jurisdiction
England and Wales
Judgment Date
13 September 2012
Procedural Posture
Civil Appeal / Court of Appeal Judgment
Outcome
Both appeals dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Stay of Proceedings, Community Trade Mark Regulation, Urgency and Expedition
Intellectual Property Civil Procedure Trade Mark Infringement Passing Off Stay of Proceedings Community Trade Mark Regulation Urgency and Expedition

Case Brief

Summary, issues, holding and outcome

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Parties

Starbucks (HK) Limited

Appellant

EMI (IP) Limited

Appellant

British Sky Broadcasting Group PLC

Respondent

Procedural Posture

Civil Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether special grounds exist under Article 104(1) of the Community Trade Mark Regulation to refuse a stay of proceedings
  2. 2 Interpretation of 'special grounds' in Article 104(1)
  3. 3 Whether urgency or business need constitutes special grounds

Ratio Decidendi

The Court held that the presumption in favour of a stay under Article 104(1) is strong and only rare, exceptional factual circumstances specific to the case can constitute special grounds. Urgency arising from imminent launch and inability to protect interests by interim relief may justify refusal of a stay, but reactive OHIM applications and passing off claims are not relevant. In Starbucks, exceptional urgency justified refusal of a stay; in EMI, lack of urgency and definite plans justified granting a stay.

Court Disposition

Both appeals dismissed.

Orders

  • Refusal of stay in Starbucks proceedings upheld; expedited trial ordered.
  • Grant of stay in EMI proceedings upheld; no expedited trial.