"It's Now or never" -- or "Oh won't you Stay?"

Every so often a case comes along that is not a big, precedent-packed blockbuster but it still sets you thinking. One such case is EMI (IP) Ltd and others v British Sky Broadcasting Group plc and another [2012] EWHC 1644 (Ch), a Patents Court (England and Wales) decision of John Baldwin QC which dates back to last month -- 25 June, to be precise. The decision has not appeared on BAILII, but a handy summary was produced on the Lawtel subscription service.

Not Now TV - the two services
are not apparently related
Sky, which said it planned to launch an online TV service under the name NOW TV, applied to the Office for Harmonisation in the Internal Market (OHIM) to have EMI's Community word mark (CTM) NOW removed from the register. EMI then alleged  Sky was infringing that mark and sought interim injunctive relief.  Sky then applied to stay EMI's infringement action pending the outcome of its application to invalidate the registered trade mark [Katnote: EMI has at least two CTMs, here -- which seems to be the relevant one -- and here, and lots of other people seem to have registered NOW as Community or UK marks too].

EMI submitted that there was an arguable case of infringement and it would suffer uncompensatable and irreparable damages to its registered rights unless injunctive relief was granted. EMI also claimed that there really was a pressing need to get the case to court, there being special grounds within the meaning of Article 104(1) of the CTM Regulation for not staying the trade mark infringement claim.

John Baldwin QC was unmoved by EMI's pleas.  In his view:
  • Since the court could not be satisfied that there was no serious issue to be tried in connection with the allegation of trade mark infringement, he would pass no further comment on the mertis of either side's case.
  • Looking at the balance of convenience, he asked what might happen in the event that a stay either were, or were not, ordered. In his view there was a certainty of real and substantial damage to  Sky if an injunction were granted.  Sky, which planned to launch its new service within the coming month, had no alternative name to fall back in within that time-frame -- and if EMI did secure an injunction,  Sky's preferred name of NOW TV would be lost forever since it was fanciful to suggest that  Sky would eve change the name back if it was injuncted now but won at trial. In contrast, EMI had been considering launching the NOW branded music channel for many years, but they still had no definite plans, having made no investment or commitment. If it transpired that the value of EMI's NOW trade mark value was indeed destroyed by  Sky's conduct, that value could be quantified, there being no certainty that EMI would suffer very substantial damage of the kind which money could not compensate. All in all, this suggested that the balance of convenience lay in favour of letting the NOW TV launch go ahead.
  • No pressing need for an expedited trial had been shown: the NOW TV service launch would have gone ahead before any likely date for an expedited trial, and it wasn't as if EMI was about to implement any actual plan to exploit its trade mark in connection with any TV channels or platforms.  Nor were any special grounds for not staying the action demonstrated.
The thing that got the IPKat thinking was this: EMI had clearly had its NOW CTM for a while. The mark was applied for in 2008 and registered in 2009 -- and the company had apparently done very little with it (though it does seem to have been used as an App).  Accordingly, said the court, the balance of convenience lay with Sky, which had advanced its plans virtually to the point of launching its channel.  But once Sky is in that position, how does one weigh up the interest of the trade mark-owning claimant?  If EMI had meant to get NOW up and running pretty quickly but had only registered the mark a couple of weeks before Sky announced its intention of launching NOW TV, or if the claimant had been an SME that was unwilling to risk investing in its plans before it knew that its CTM application was in the bag, would the outcome have been any different? If not, businesses should be seriously reconsidering the strategic value of the oft-favoured policy of gaining a trade mark registration before advancing their marketing plans.

It's now or never, here and, if you can bear it, here
Oh won't you stay? here
"It's Now or never" -- or "Oh won't you Stay?" "It's Now or never" -- or "Oh won't you Stay?" Reviewed by Jeremy on Friday, July 20, 2012 Rating: 5


  1. Have a look at Starbucks -v- BSB 2012] EWHC 1842 (Ch)for Arnold's take on the same problem.


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