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

Under Article 104(1) of the CTM Regulation, proceedings concerning a Community trade mark must generally be stayed when validity is already before OHIM. A stay may nevertheless be refused where case-specific circumstances cumulatively amount to special grounds. Relevant factors include the timing and objective effect of the OHIM application, likely delay, closely overlapping non-CTM claims, and whether one court can resolve all disputes together. Expedition requires consideration of good reason, the administration of justice, prejudice, and other special factors.

Starbucks sought an expedited trial of claims that Sky’s proposed NOW TV service would infringe a Community trade mark and constitute passing off. Sky applied for a stay of the Community trade mark claims under Article 104(1) of the CTM Regulation because it had applied to OHIM for invalidity proceedings after correspondence threatening infringement proceedings and an interim injunction.

Sky did not seek a stay of the passing off claim, but Starbucks accepted that the closely overlapping claims should be stayed together if the CTM proceedings were stayed. The issues were whether special grounds justified refusing a stay and whether the trial should be expedited.

1. The court refused Sky’s application for a stay under Article 104(1) and granted Starbucks’ application for expedition.
2. Article 104(1) is directed to avoiding multiple proceedings and inconsistent decisions. It ordinarily requires a stay where validity is already in issue before OHIM, unless special grounds exist. Those grounds have an autonomous European-law meaning and must relate to factual circumstances specific to the case. Nokia Corp v Joacim Wärdell [2006] ECR I-12083 was relevant by analogy.
3. The court could consider the circumstances in which the OHIM proceedings were instituted and the expected time before final determination. That did not involve reviewing OHIM’s jurisdiction, treating the proceedings as abusive, or relying on procedural differences. The principles in Turner v Grovit [2004] ECR I-3565 and Ryanair Holdings plc v Office of Fair Trading [2012] EWCA Civ 643 were accepted but did not require a stay.
4. Cumulatively, special grounds existed. Sky’s application was made only after the letter before action and an extension of time; the OHIM process was likely to cause substantial delay; the passing off claim had substantial evidential overlap; and this court was the only tribunal able to determine all disputes together. Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729 was persuasive, while EMI (IP) Ltd v British Sky Broadcasting Group plc [2012] EWHC 1644 (Ch) was distinguished.
5. For expedition, the court applied the four factors identified in WL Gore & Associates GmbH and Geox SPA [2008] EWHC Civ. 622: good reason, administration of justice, prejudice, and other special factors. The impending launch, marketing expenditure, risk to goodwill, and need for commercial certainty justified expedition. An October trial would not unduly prejudice Sky or other litigants.