When is a threat not a threat? This was the question before the court in Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL  EWHC 1666 (Ch), in a case decided by Mr Justice Floyd in the Chancery Division (England Wales) last Thursday. At the heart of the question lies the meaning of the Trade Marks Act 1994, section 21: this is the very model of a statutory provision that you have to read carefully a couple of times so that you don't end up thinking it means the opposite of what it says. The section reads like this:
"(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than— (a) the application of the mark to goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c) the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section.
(2) The relief which may be applied for is any of the following— (a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by the threats; and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
(3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
(4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section".The claimants (US corporation Best Buy and its UK subsidiary) intended to open a series of shops in the UK and elsewhere in Europe under the name 'Best Buy'. Worldwide, a Spanish corporation, held a number of national and Community registrations that contained, by sheer coincidence, the words 'Best Buy' in combination with devices and other graphics. The claimants applied to register as a Community trade mark a sign including the words 'Best Buy', which Worldwide opposed. Hoping to salvage something from the situation, the claimants' lawyers wrote to the Worldwide to sound the Spaniards out with regard to a possible coexistence agreement, only to receive a somewhat unwelcoming response in the form of a "without prejudice" letter from Worldwide's lawyers stating that their client was entitled to take appropriate legal action to defend its interests in the event that the claimants should start to expand into the European market. The claimants got really excited about this and commenced section 21 proceedings, alleging that this letter was an unwarranted threat to launch trade mark infringement proceedings against them.
The IPKat wonders whether Parliament shouldn't do the honourable thing and introduce a new action which trade mark owners can bring against people who, without justification, launch proceedings against them for making unjustified threats to bring trade mark infringement proceedings. Merpel says, when businesses try to monopolise descriptive [if true] or deceptive [if false] terms like "best buy", I have little sympathy for them.