Best Buy Co Inc proposed to enter the European market under the name of Best Buy.

Best Buy Enterprises Services (BBES) (related to Best Buy) applied for a Community trade mark incorporating the words BEST BUY. This was opposed by the defendant (España) on the basis of its two earlier marks: Best Buy Co Inc v Worldwide Sales Corporation España SL [2010] EWHC 1666 (Ch).

España's lawyers sent a letter to Best Buy, stating

In order to ensure that [España] is able to protect its rights in a proper fashion, we hereby request that, within a term of fifteen (15) calendar days as of the date of receipt of this letter, you reply to us in writing confirming (i) [Best Buy's] willingness to start a negotiation process with [España] in order to attempt to find a negotiated solution to the conflict; or (ii) your client's undertaking to not use the BEST BUY trademark in Europe, or issue any news in the press or make any announcements of any imminent activity in Europe, or indeed use such trade mark in any other way.

The issues before the court were whether the letter from España's lawyers threatened proceedings for infringement of España's marks; if so, whether the threat was made in relation to an infringement excluded from the threats provision; and, if a non-excluded threat was made, whether evidence of it was inadmissible by virtue of the "without prejudice" rule.

The court considered that the recipient would understand from España's lawyers' letter that proceedings for trade mark infringement were being threatened. The conditionality did not negate that threat.

The court held that the threats provisions of the Trade Marks Act 1994 referred to proceedings for infringement in the UK courts and its extension to Community trade marks had no widening effect. The court held that the reasonable recipient would consider that España had a range of options as to the forum in which it could bring proceedings and that it was not limiting itself to bringing proceedings in Spain.

The court rejected España's defence based on excluded acts. The letter sought undertakings in respect of any use of the mark, which went much wider than the supply of services and included offering to do so, an act not excluded from the threats provisions.

However, the court accepted that, although the correspondence was not marked “without prejudice”, the two businesses were seeking an alternative to litigation and their efforts to do so should not constitute an admissible threat. Overall, the letter was setting out a negotiating position. Given that España's negotiating position involved enforcing its marks, it was natural to draw Best Buy's attention to the consequences of the failure of the negotiations.