EMI reacted badly when Sky announced the launch of an internet TV service called NOW TV. EMI had owned the registered trade mark NOW covering similar services since 2008. Sky refused to back down so EMI applied to court for an injunction banning Sky’s use of the NOW TV monicker. Open and shut case? Dr Catherine Lee reports.
Who: (1) EMI (IP) Ltd (2) EMI GROUP Ltd (3) EMI Records Ltd (4) Virgin Records Ltd v (1) British Sky Broadcasting Group plc (2) British Sky Broadcasting Group Ltd  EWHC 1644 (Ch)
Where: Patents Court (England and Wales)
When: June 2012
Law stated as at: 1 August 2012
EMI had a registered Community Trade Mark for the word NOW (No 7153505) in Classes 35, 38 and 41 with effect from 12 August 2008. The CTM had been used in respect 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).
On 21 March 2012, BSkyB announced its intention to launch an internet TV Service with the name NOW TV and a logo. On 18 May 2012, EMI commenced proceedings for trade mark infringement and passing off (the latter action later abandoned), relying on its CTM and the goodwill generated by use of NOW as album titles.
In response, on 23 April 2012, BSkyB applied to the Community Trade Marks Office (OHIM) to remove the CTM NOW from the register. Then, EMI filed an application with the Patent Court seeking (a) an interim injunction against BSkyB from using the name NOW TV or the logo in relation to internet TV services and (b) an order for an expedited trial.
BSkyB resisted both applications and sought an order staying the action pending the outcome of the proceedings before OHIM. BSkyB also offered an undertaking not to use the NOW name for a music channel pending the trial of the main action.
At the interim proceedings, EMI contended (at ) that if BSkyB’s proposed launch went ahead, then Sky would capture the NOW brand for itself in connection with both TV platforms and TV channels such that, when EMI succeeded at trial, its CTM would be worthless because it would have been tainted beyond restore. EMI further urged that the damage would have been done and that although it might obtain injunctive relief to restrain further use of NOW by BSkyB, that relief would have come too late to be of any value.
On the other hand, BSkyB contended (at ) that there was no arguable case of trade mark infringement and on the balance of convenience, contrasted the certainty of real and substantial damage to it with the speculative nature of any loss to EMI. To support its assertion that EMI had no arguable case, BSkyB asserted (at ) that (a) there was no likelihood of confusion because EMI's CTM was now unused and (b) the proposed BSkyB service was very different from any services for which the CTM was registered.
HHJ John Baldwin QC was not satisfied that there was no serious issue to be tried on the allegation of trade mark infringement (at ).
Turning to the issue of the balance of convenience, HHJ Baldwin QC considered what could happen if a stay was ordered.
His Honour was satisfied (at ) that there was a certainty of real and substantial damage to BSkyB if the injunction were granted. BSkyB intended to launch its new service sometime in the summer of 2012 and it did not have an alternative name which it could use within that time frame. In any event the reality of the situation was that if the injunction were granted, then BSkyB's preferred name of NOW TV would be lost to it forever.
However, EMI had been considering launching a NOW branded music TV channel for many years, but still had no investment or commitment to a NOW branded TV channel (at ). If, as EMI contended, its value was completely destroyed by BSkyB’s conduct, then according (at ) to HHJ Baldwin QC, quantification of that value would be possible, even if the exercise might be difficult. Although BSkyB had not yet launched, it had announced its plans to do so and was well advanced in a plan which has been in development for over a year. For HHJ Baldwin QC (at ), therefore, the status quo favoured letting that plan run its course.
2. Expedited trial
EMI requested a speedy trial before the end of September 2012. HHJ Baldwin QC was not convinced. In his view (at ), EMI had not demonstrated a pressing need for the matter to be heard sooner rather than later.
BSkyB’s launch of its NOW TV platform would go ahead before any likely trial date and this, together with the absence of any sufficiently certain plans by EMI to exploit its NOW trade mark in connection with TV channels or programmes, pointed against the need to disturb the normal order of things.
Therefore HHJ Baldwin QC was not satisfied that EMI had made out a case for expedition and, but for the question of stay, the action should proceed in accordance with the timetable set out in the CPR.
In the circumstances, it seemed to HHJ Baldwin QC that the right order was to stay the registered trade mark proceedings pending the outcome of BSkyB’s application to OHIM to invalidate EMI's NOW CTM.
Why this matters:
This case is thought provoking for its consideration of the rights of the owners of an unused registered trade mark versus a company who had practically launched a product using a similar name for potentially similar services.
Would the result have been any different if (a) EMI had intended to launch NOW imminently and only applied for the trade mark shortly before BSkyB had announced NOW TV? or (b) the claimant had been a small business unwilling to exploit a trade mark until the registration had been secured? If not, as suggested by Prof Jeremy Phillips on the IPKat, one needs to reconsider the strategic value of the normally standard policy of obtaining a trade mark registration before advancing their marketing plans.