The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar style, and opposed the application, refering to its existing registrations. The claimants had proposed a co-existence agreement, but now complained of the reply.
Held: The action failed. The recipient would understand from the CC letter in the clearest terms that proceedings for infringement of trade mark were being threatened. The letter did contain offers to negotiate, and though it was not explicitly without prejudice, it was written within the negotiating process, and was in fact to be protected by the without prejudice rule.
 EWHC 1666 (Ch)
Trade Marks Act 1994 21, Community Trade Mark Regulations 2006 (SI 2006 No 1027) 6(1)
England and Wales
Cited – Cavity Trays Ltd v RMC Panel Products Ltd CA 2-Jan-1996
The exclusion provided in section 70(4) of the 1977 Act is of limited scope. Whatever the legislative intention, it does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both . .
Cited – Brain v Ingledew Brown Benson and Garrett and Another CA 1996
The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether . .
Cited – Prince PLC v Prince Sports Group Inc ChD 1998
In a threat action for trade mark infringement, the plaintiff had only supplied services. The defendant made a general threat without limiting it to proceedings in respect of goods or services. The defendant argued that the threat would be . .
Cited – Rush and Tomkins Ltd v Greater London Council HL 3-Nov-1988
The parties had entered into contracts for the construction of dwellings. The contractors sought payment. The council alleged shortcomings in the works. The principal parties had settled the dispute, but a sub-contractor now sought disclosure of the . .
Cited – Unilever plc v Procter and Gamble Company CA 4-Nov-1999
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section . .
Cited – Chocoladefabriken Lindt and Sprungli AG and another v The Nestle Co Ltd 1978
Megarry V-C said that the mere failure to use the expression ‘without prejudice’ is not decisive of whether the letter is such. The question is whether the letters were written in an attempt to compromise actual or pending litigation and, if so, . .
Cited – Schering Corporation v CIPLA Ltd and Another ChD 10-Nov-2004
The defendants appealed against a refusal to strike out the patent infringement proceedings issued by the claimant, saying the only evidence offered was a letter written by the defendants which was headed ‘without prejudice’.
Held: The . .
Cited – L’Oreal (UK) Limited and Another v Johnson and Johnson and Another ChD 7-Mar-2000
The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo.
Held: The court had to consider both the letter and the surrounding . .
Cited – Standrin v Yenton Minster Holmes Ltd CA 28-Jun-1991
The parties had exchanged letters asserting an insurance claim. They had been marked without prejudice, and one party now objected to their admission in evidence.
Held: The letters did not have the protection sought. At the time they were . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice
Updated: 01 November 2021; Ref: scu.420427