Starbucks (HK) Ltd & Anor vBritish Sky Broadcasting Group Plc & Ors [2013] EWCA Civ 1465 (15 November 2013)

Starbucks (HK) Ltd & Anor vBritish Sky Broadcasting Group Plc & Ors [2013] EWCA Civ 1465 (15 November 2013)

The word 'NOW' is not distinctive for television services as it designates the instant and immediate nature of the service, making the Community Trade Mark invalid under Article 7(1)(c) and (b). The claimants did not have a protectable goodwill in the UK at the relevant date, as they had no customer base or business activity in the UK; mere accessibility of their programmes via the internet and preparatory activities were insufficient for passing off.

Citation
[2013] EWCA Civ 1465
Parties
Claimant/appellant: STARBUCKS (HK) LIMITED; Claimant/appellant: PCCW MEDIA LIMITED; Defendant/respondent: BRITISH SKY BROADCASTING GROUP PLC; Defendant/respondent: BRITISH SKY BROADCASTING LIMITED; Defendant/respondent: SKY IP INTERNATIONAL LIMITED
Jurisdiction
England and Wales
Judgment Date
15 November 2013
Procedural Posture
Appeal / Judgment on Appeal From High Court, Chancery Division
Outcome
Appeal dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Community Trade Mark Regulation, Distinctiveness, Goodwill
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Community Trade Mark Regulation Distinctiveness Goodwill

Case Brief

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Parties

STARBUCKS (HK) LIMITED

Claimant/appellant

PCCW MEDIA LIMITED

Claimant/appellant

BRITISH SKY BROADCASTING GROUP PLC

Defendant/respondent

BRITISH SKY BROADCASTING LIMITED

Defendant/respondent

SKY IP INTERNATIONAL LIMITED

Defendant/respondent

Procedural Posture

Appeal / Judgment on Appeal From High Court, Chancery Division

Legal Issues

  1. 1 Whether the word 'NOW' is validly registered as a Community Trade Mark for television services
  2. 2 Whether the claimants have protectable goodwill in the UK sufficient to support a passing off claim

Ratio Decidendi

The word 'NOW' is not distinctive for television services as it designates the instant and immediate nature of the service, making the Community Trade Mark invalid under Article 7(1)(c) and (b). The claimants did not have a protectable goodwill in the UK at the relevant date, as they had no customer base or business activity in the UK; mere accessibility of their programmes via the internet and preparatory activities were insufficient for passing off.

Court Disposition

Appeal dismissed

Orders

  • Dismissal of claimants' action
  • Declaration that claimants' Community Trade Mark registration for 'NOW' is invalid