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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ors (Rev 2) [2012] EWCA Civ 1201 (13 September 2012) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2012/1201.html Cite as: [2013] Bus LR 633, [2012] EWCA Civ 1201 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(1) Mr Justice Arnold
(2) Deputy Judge Baldwin QC
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE PATTEN
and
LORD JUSTICE TOMLINSON
____________________
(1) Starbucks (HK) Limited |
Respondent |
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- and - |
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British Sky Broadcasting Group PLC & Ors (2) EMI (IP) Limited & Ors - and - British Sky Broadcasting Group PLC and Anr |
Appellants Appellants Respondents |
____________________
Michael Silverleaf QC and Richard Hacon (instructed by Dechert LLP) on behalf of Starbucks
Simon Thorley QC and Anna Edwards-Stuart (instructed by Bird & Bird LLP) on behalf of EMI
Hearing dates : 22/23 August 2012
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Crown Copyright ©
Lord Justice Etherton :
The legal framework
The EMI proceedings
(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).
"I see nothing in the first ground to take the case outside the norm. An application to invalidate a registration which is threatened against a party seems to me to be no more than what could be described as an expected response. The fact that no steps were taken to clear the way is to my mind of little consequence in this context. Although there was no direct evidence on it, as I have mentioned already, steps to clear the way are not often commercially practical in trade mark cases. The fact that the passing off claim will continue in any event is again of little import, especially in the circumstance that EMI did not seek to rely on this cause of action in its application for interim relief. Finally, the need for commercial certainty is no greater in this case than in many others; on the facts there is nothing to take the case outside the norm in the context of commercial certainty."
The Starbucks proceedings
The appeals
The Starbucks proceedings
The EMI proceedings
Discussion
"Gucci also relies on the proposition that business needs to know where it stands. This will very often be a factor of considerable importance. However, first, it is a general proposition applicable to all business disputes and cannot therefore be considered to be a special ground applicable to this individual case. Second, the delay in question is one inherent in OHIM's own procedures and workload which also cannot be a special ground applicable to this individual case. Third, in the present case the defendant has stopped importing and selling the infringing goods and has offered undertakings not to do so until OHIM has determined its application. So there is no actual prejudice to Gucci and, in any event, in staying proceedings the court can impose provisional protective measures. Thus, even if there are others who might infringe the CTMs in the future as to which there is no real evidence, Gucci can protect its position by interim injunction."
"It seems to us that, while it would be rash to attempt to define "special grounds", something can usefully be said in relation to the legislative policy. The nature and force of the special grounds which would justify not ordering a stay in a given case would need to be such as make it appropriate to allow proceedings to continue to which article 91(1) applies, thereby opening up the possibility of parallel and active proceedings on the same issue of validity or otherwise, and therefore possible inconsistent decisions on the same point in different courts or as between a Community design court and OHIM. The grounds would have to be of sufficient importance and substance, on the facts of the given case, to justify that risk. In relation to the present case, some features apparent to us might be eligible to be brought into account on this question. (There may well be others.) One is that the current proceedings in England do not in fact include any issue as to validity, because Samsung has not responded to Apple's counterclaim, as it could have done, by counterclaiming for a declaration of invalidity. Therefore the proceedings as currently constituted would not result in the English court coming to a decision as to validity which would be even potentially inconsistent with whatever determination was eventually reached (if any) by OHIM. Another relevant factor might be the objectively justifiable need, as found by the judge, for speed in the determination of the claim, though whether that itself justifies allowing the counterclaim to proceed, rather than only the claim, may require further consideration. Moreover, although we do not see that the parties' agreement could itself constitute special grounds, the fact that they do agree, or that Samsung does not object, and that the invalidity proceedings are brought by Samsung, may be a factor which can properly be taken into account."
"19. Apple did not oppose Samsung's suggestion that the infringement counterclaim should not be stayed but the Court of Appeal held that the agreement of the parties, or absence of opposition on the part of the claimant, was not sufficient by itself to amount to "special grounds" (judgment of the court paragraph 48). The Court of Appeal were not confident that they had before them all the relevant material on which to decide this question and so decided to remit it to be decided at the time of the trial. I now have to decide the point.
20. In paragraph 49 the Court of Appeal explained the legislative policy relating to "special grounds" and drew attention to certain features of this case which might be relevant. The policy is concerned with the problem that allowing the infringement proceedings to continue opens up the possibility of parallel proceedings on the same issue and a risk of inconsistent judgments on the same point between a Community design court and OHIM. The "special grounds" have to be sufficient to justify that risk. The features of this case the Court drew attention to are: first that these proceedings do not include validity therefore there is no risk of an inconsistent validity judgment; second that there is a need for a speedy determination of the claim, although whether that justifies allowing the counterclaim to proceed rather than only the claim may require thought; third, that the parties agree or do not object, although not determinative, is a relevant factor.
21. In considering what to do I believe I should consider whether any party would be prejudiced by the stay or by the refusal of a stay, I must consider the policy behind this part of the Regulation and the risk of inconsistent judgments and I must look at the overall balance of justice. All this is carried out bearing in mind that the Regulation provides that the court shall stay the infringement action unless special grounds exist not to do so. The clear emphasis is on a stay. To avoid it there must be special grounds not to.
22. Before me both parties agree that the counterclaim should not be stayed. That disposes of any prejudice. The parties are best able to look after their own interests. Samsung have not sought a declaration of invalidity in these proceedings and both sides agree therefore that there is no risk of inconsistent judgments between the Community design court and OHIM. As regards considering the issue of infringement, this action is going to consider infringement anyway since that is the purpose of Samsung's claim for a declaration. On any view the matter is plainly commercially urgent.
23. Is a declaration enough to satisfy the commercial urgency of the claim or should the infringement claim proceed too? Apple submitted that if the court decides that the Galaxy tablets (or any of them) infringe then it would be unfair for Apple to have to wait for relief pending the outcome at OHIM. I agree. Thus while there is no risk of injustice if I allow the infringement claim to proceed, there is a genuine risk of injustice if I stay the counterclaim and allow the declaration issue to be heard without it.
24. Taking all these points together I find that there are special grounds not to stay the infringement counterclaim. I will not do so."
"Notwithstanding the explanations given by the referring court and contrary to the view put forward by Mr Turner and the United Kingdom Government, such interference cannot be justified by the fact that it is only indirect and is intended to prevent an abuse of process by the defendant in the proceedings in the forum State. In so far as the conduct for which the defendant is criticised consists in recourse to the jurisdiction of the court of another Member State, the judgment made as to the abusive nature of that conduct implies an assessment of the appropriateness of bringing proceedings before a court of another Member State. Such an assessment runs counter to the principle of mutual trust which, as pointed out in paragraphs 24 to 26 of this judgment, underpins the Convention and prohibits a court, except in special circumstances which are not applicable in this case, from reviewing the jurisdiction of the court of another Member State."
Decision – Starbucks
Decision – EMI
Conclusion
Lord Justice Patten
Lord Justice Tomlinson
Appendix
The Judgments Regulation
Article 27
- Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
- Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.
Article 28
- Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings.
- Where these actions are pending at first instance, any court other than the court first seised may also, on the application of one of the parties, decline jurisdiction if the court first seised has jurisdiction over the actions in question and its law permits the consolidation thereof.
- For the purposes of this Article, actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.
The CTM Regulation
Whereas:
(16) Decisions regarding the validity and infringement of Community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of Community trade marks is not undermined. The provisions of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (1) should apply to all actions at law relating to Community trade marks, save where this Regulation derogates from those rules.
(17) Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on lis pendens and related actions of Regulation (EC) No 44/2001 appear appropriate.
Article 1
Community trade mark
…
2. A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation.
Article 55
Consequences of revocation and invalidity
…
3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect:
(a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision;
…
Article 56
Application for revocation or for a declaration of invalidity
1. An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office
…
3. An application for revocation or for a declaration of invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision.
Article 94
Application of Regulation (EC) No 44/2001
1. Unless otherwise specified in this Regulation, Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of Community trade marks and national trade marks.
2. In the case of proceedings in respect of the actions and claims referred to in Article 96:/BLOCKQUOTE>
(a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply;
(b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation;
(c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein.
Article 96
Jurisdiction over infringement and validity
The Community trade mark courts shall have exclusive jurisdiction:
(a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks;(b) for actions for declaration of non-infringement, if they are permitted under national law;(c) for all actions brought as a result of acts referred to in Article 9(3), second sentence;(d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100.
Article 103
Provisional and protective measures
1. Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter.
2. A Community trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction.
Article 104
Specific rules on related actions
1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of noninfringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.
2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.
3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay.