Best Buy Company Inc. and Another v Worldwide Sales Corporations Espana SL

JurisdictionEngland & Wales
Judgment Date24 May 2011
Neutral Citation[2011] EWCA Civ 618
Date24 May 2011
CourtCourt of Appeal (Civil Division)

Court of Appeal

Before Lord Neuberger of Abbotsbury, Master of the Rolls, Lord Justice Etherton and Lord Justice Patten

Best Buy Co Inc and Another
and
Worldwide Sales Corporation España SL
Threat of proceedings

A person threatened another with proceedings for infringement of a registered trade mark within section 21 of the Trade Marks Act 1994 when he stated or implied that he would bring a claim if the other did not agree to the terms he proposed. The test was whether a reasonable recipient would underst and the statements made indicated not simply an assertion of legal rights but an intention to enforce those rights.

The Court of Appeal (Lord Neuberger of Abbotsbury, Master of the Rolls, Lord Justice Etherton and Lord Justice Patten) so held on May 24, 2011, when: (i) allowing the appeal of Best Buy Co Inc and Best Buy Europe Distributions Ltd against Mr Justice Floyd's dismissal ([2010] Bus LR 1761) o f their claim against Worldwide Sales Corporation España SL for threats of proceedings for infringement of a trade mark within section 21 of the 1994 Act, and (ii) granting a declaration that the threats were unjustifiable.

THE MASTER OF THE ROLLS said that the argument of principle was whether the exceptions in section 21(1)(a) to (c) were to be interpreted according to their natural import, or relatively widely.

In his Lordship's view, those three paragraphs were to be construed by reference to their natural meaning and...

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19 cases
  • Best Buy Company Inc. v Worldwide Sales Corpn España SL
    • United Kingdom
    • Court of Appeal (Civil Division)
    • Invalid date
    ... ... Court of Appeal Best Buy Co Inc and another v WorldwideSales Corpn Espaa SL [ 2011 ]E W C AC i v 618 2011 May 5 ; 24 Lord Neuberger of ... 1166 Best Buy CoInc v Worldwide Sales Corpn Espana SL (CA) Best Buy Co Incv Worldwide Sales Corpn Espan ˜a SL (CA) [2011] Bus LR [2011] Bus LR ... ...
  • Alan Ramsay Sales & Marketing Ltd v Typhoo Tea Ltd
    • United Kingdom
    • Queen's Bench Division (Commercial Court)
    • 8 March 2016
    ...to have intended, when read in the context of the letter as a whole" (per Lord Neuberger MR in Best Buy Co Worldwide Sales Corporation [2011] EWCA Civ 618; [2011] BusLR 1166 at [18]. It follows that, although the court heard evidence from both Mr Ramsay himself and Mr Keith Packer, the Chi......
  • T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd and Others
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 23 October 2015
    ...sent to Designer Textiles and Nice Carpets are concerned the law on threats is clear and well established. I was referred to Best Buy v Worldwide Sales Corp Espana [2011] FSR 30 at [22], FNM Corporation v Drammock International [2009] EWHC 1294 at [214]; L'Oreal (UK) Ltd v Johnson & Johnson......
  • Generics (UK) Ltd trading as Mylan v Warner-Lambert Company LLC
    • United Kingdom
    • Chancery Division (Patents Court)
    • 10 September 2015
    ...will take into account all of the relevant circumstances known to the parties at the date of the communication: see Best Buy Co Inc v Worldwide Sales Corp Espana SL [2011] EWCA Civ 618, [2011] FSR 30 at [18] (Lord Neuberger of Abbotsbury MR). A communication may amount to a threat even if......
  • Request a trial to view additional results
4 firm's commentaries
  • DON’T YOU THREATEN ME!: Incurring Liability For Making Groundless IP Infringement Threats In The Light Of The Current Law Reform Consultation
    • United Kingdom
    • Mondaq United Kingdom
    • 20 June 2013
    ...2482(CH) Zeno Corporation v BSM-Bionic Solutions [2009] EWHC 1829(Pat) Best Buy Co Inc et al v Worldwide Sales Corporation España Sl [2011] EWCA Civ 618. CP 212 17 April 2013; the deadline for responding to the consultation is 17 July see Brain v Ingledew Bennison [1995] FSR 552, et seq The......
  • Court of Appeal - Threats Action
    • United Kingdom
    • Mondaq United Kingdom
    • 8 July 2011
    ...Bulletin - June 2011 Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL, [2011] EWCA Civ 618, 24 May The Court of Appeal has allowed an appeal in an action for threats under section 21 of the Trade Marks Act 1994. The dispute concerned the trade mark "Best Buy". The claiman......
  • Court Of Appeal Gives Guidance On Trade Mark Threats And Without Prejudice Communication
    • United Kingdom
    • Mondaq United Kingdom
    • 6 June 2011
    ...the need to seek specialist advice on such issues. Case: Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2011] EWCA Civ 618, 24 May This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law......
  • IP Snapshot June 2011
    • United Kingdom
    • Mondaq United Kingdom
    • 28 June 2011
    ...Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2011] EWCA Civ 618, 24 May The Court of Appeal has reversed a judgment handed down by the High Court last year regarding the provisions governing unlawful threats of trade mark infringement proceedings in the UK. The Court cons......
2 books & journal articles
  • Federalizing embryo transfers: taming the wild west of reproductive medicine?
    • United States
    • Columbia Journal of Gender and Law Vol. 23 No. 2, June 2012
    • 22 June 2012
    ...Weiner resigned from Congress on June 16, 2011. See Raymond Hernandez, In Chaotic Scene, Weiner Quits Seat in Scandal's Wake, N.Y. TIMES, June 17,2011, at (257) H.R. 697, 111th Cong. [section] 2708 (2009). (258) A similar bill on the Senate side, introduced by Senator Kirsten Gillibrand, li......
  • 'Innocence fraud' demands prosecutor vigilance.
    • United States
    • Prosecutor, Journal of the National District Attorneys Association Vol. 48 No. 4, October - October 2014
    • 1 October 2014
    ...(10) David Carr and John Schwartz, "A Watchdog Professor, Now Defending Himself," New York Times. June 17, 2011. http://www.nytimes.com/ (11) "False Confessions or Admissions," Innocence Project, Accessed May 18, 2015. http://innocenceproject.org/causes-wrongful-conviction/false-confessions......

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