1.Emi (IP) Ltd and Others v 1.British Sky Broadcasting Group Plc and Another
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin QC |
| Judgment Date | 25 June 2012 |
| Neutral Citation | [2012] EWHC 1644 (Ch) |
| Court | Chancery Division |
| Date | 25 June 2012 |
| Docket Number | Claim No HC 12 B02073 |
[2012] EWHC 1644 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
Mr John Baldwin QC
(sitting as a Deputy Judge of the Chancery Division)
Claim No HC 12 B02073
Roger Wyand QC and Anna Edwards-Stuart (instructed by Bird & Bird LLP) appeared on behalf of the Claimants.
Geoffrey Hobbs QC and Guy Hollingworth (instructed by S J Berwin LLP) appeared on behalf of the Defendants.
Hearing date: 1 st June 2012
I direct that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
Dated 25 June 2012
On 21 March 2012 the Defendants (Sky) announced an intention to launch an Online TV Service under and by reference to the designation NOW TV. There was considerable concern within the Claimants (EMI). Correspondence started on 20 April 2012, and on 18 May 2012 EMI brought proceedings for trade mark infringement and passing off relying, respectively, on Community Trade Mark 7,153,505 for the word mark NOW (the CTM) and the goodwill built up in the name NOW by reason of the promotion and sale of compilation albums under the style NOW THAT'S WHAT I CALL MUSIC, with each consecutive album given a number (NOW 1, NOW 2 etc).
By this application EMI seeks interim injunctive relief to restrain Sky from using in relation to internet TV services the name NOW TV or the logo.
EMI also seeks an order for an expedited trial. Sky resist both applications and seek an order staying the action pending the outcome of an application it made on 23 April 2012 to the Community Trade Marks Office (OHIM) to remove the CTM from the register. I shall deal with each application in turn. In an attempt to head off EMI's claim, Sky have offered an undertaking not to use the NOW name for a music channel pending the trial of the action.
At the end of the hearing I indicated my intention to refuse the application for interim injunctive relief but there was insufficient time to give reasons therefor. I now set out those reasons and give my decisions on the other two applications.
EMI's evidence filed in support of its applications gives much detail about the goodwill it claims to own in connection with the NOW mark but at the hearing its counsel, Mr Wyand QC, abandoned any reliance on passing off and relied only on registered trade mark rights. Accordingly, I was not troubled with any argument about damage to any existing reputation in the NOW brand.
The CTM is registered with effect from 12 August 2008 for a range of goods and services including:
(1) The bringing together, for the benefit of others, of sound recordings and audiovisual recordings featuring musical performances, enhanced sound and/or visual recordings featuring musical performances, sound and/or visual recording media … enabling customers to conveniently view and purchase those goods (class 35);
(2) Transmission of sound or audiovisual recordings featuring musical performances over a communication medium, including wired and/or wireless system, broadband, narrowband, Internet, satellite, optical fibre, wire, cable or other electronic means (class 38);
(3) Production and distribution services in the field of sound and/or visual recordings featuring musical performances; information services relating to sound recordings and audiovisual recordings featuring musical performances provided on-line from a computer database, from the Internet or any other communication network including wireless, cable, satellite (class 41).
EMI contends that there is plainly an arguable case of infringement and submits it will suffer uncompensatable and irreparable damage to its registered rights unless injunctive relief is granted. In a nutshell, it contends that if Sky's proposed launch goes ahead then Sky will capture the NOW brand for itself in connection with both TV platforms and TV channels such that, when it succeeds at trial, the registration will be worthless because the mark will have been tainted beyond restore. EMI urge that the damage will have been done and that although it might get injunctive relief to restrain further use of NOW by Sky, that relief will come too late to be of any value.
Moreover, EMI urged upon me that Sky had taken no steps to clear the way, an argument which finds favour with some in relation to the grant of interim relief in patent actions, but had gone ahead with its plans with its eyes open to the risks of interim injunctive relief being granted. EMI urged me to preserve the status quo, to have little sympathy with Sky's claims to immediate damage because Sky had brought matters upon itself by not announcing its plans earlier.
Mr Hobbs QC, for Sky, put the matter rather differently. He contended that there was no arguable case of infringement and in relation to the balance of convenience he contrasted the certainty of real and substantial damage to his clients with the speculative nature of any loss to EMI.
Mr Hobbs had two arguments in support of there being no arguable case. He pointed out that the matter must proceed on the basis that the registration was of an unused mark and urged that NOW TV and the associated logo were so different from the registered mark that there was no likelihood of confusion. Secondly he said that in any event the service his client was intending to launch was very different from any services in respect of which the CTM was registered. With respect to the class 38 list of services, he submitted that his clients were not offering or threatening to offer transmission services; the NOW TV service made content available to users over the internet on an 'on demand' basis but did not involve providing transmission services to anyone. He drew attention to the contrast between lawyers who offer legal services and advertisers who advertise but do not offer advertising services.
I have considered the rival arguments carefully and am not satisfied there is no serious issue to be tried in connection with the allegation of trade mark infringement. That being so it is, in my view, better that I express no further comment upon the merits of either side's case but turn directly to the balance of convenience, with a view to reaching a decision which will cause the least injustice.
I am satisfied that there is a certainty of real and substantial damage to Sky if the injunction is granted. Sky plans to launch its new service sometime after the 2012 Euro Football competition but before the 2012 London Olympics, that is to say before the end of July 2012. It does not have an alternative name which it could use within that time frame but in any event the reality is that if the injunction were granted then the preferred name of NOW TV would be lost to Sky forever. It is fanciful to suggest that it would change back to that name if it were injuncted now but won the action, and this is a matter I can take into account.
Moreover Sky's position is in my judgment in stark contrast to that of EMI. It has been considering launching a NOW branded music TV channel for many years, but still has no definite plans. Mr Hobbs submitted the plans were not even in the 'definite maybe' category, and there is some force in that. Moreover, Mr Hobbs suggested the evidence indicated that EMI did not have the financial resources to launch any music TV channel, but I do not need to reach any conclusions on that. The most important matter to my mind is that EMI has no firm plans, has made no investment in or commitment to a NOW branded TV channel. Moreover, the evidence is that some other company, All Around the World Limited, holds the relevant OfCom licence. There is no evidence at all from that company and I know very little about it or its intentions save that it is 50% owned by Universal, the company with whom EMI Group are in the process of merging. If there were real imminent plans to do something in connection with use of the NOW registration, I would have expected All Around the World to have shown its hand.
Thus EMI has a registration which it has seen no occasion to exploit or has chosen not to exploit in connection with TV channels or TV platforms for some time. As an asset, it exists and will continue to exist if EMI fends off Sky's attack on its validity. But at the moment it is nothing more than that. If, as EMI contend, its value is destroyed completely by Sky's conduct, then quantification of that value will be possible, even if there is some difficulty with it. But there is no certainty of very substantial damage of the kind for which money cannot compensate.
There is a further point which weakens EMI's position on irreparable damage and it arises out of the fact that EMI has reached agreement with a third party, Starbucks (HK) Ltd whereby that latter company is free to use the NOW mark in relation to a TV service and apparently intends to do so in the near future, although I have little information in that respect. Although EMI and Starbucks HK have agreed to consider ways of minimising any likelihood of confusion, the fact is that EMI has agreed to live with a third party using the NOW brand in relation to a TV service. That being so, says Mr Hobbs, how can it suffer irreparable damage from Sky's current plans? I see much force in that rhetorical question.
Regarding EMI's argument that Sky took no steps to clear the way, I attach little importance to this. It is not realistic for a commercial operation like Sky to give lengthy notice of its otherwise confidential plans so that matters such as trade mark or passing off rights can be sorted out before any actual launch. There are many...
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