Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors [2012] EWHC 3074 (Ch) (02 November 2012)

Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors [2012] EWHC 3074 (Ch) (02 November 2012)

The CTM is invalid under Article 7(1)(c) as it is descriptive of the services and under Article 7(1)(b) as it is devoid of distinctive character. The mark had not acquired distinctiveness in the UK by the relevant date. There is no likelihood of confusion between Sky's use and any residual goodwill of the claimants in the UK, and the claim for passing off fails for lack of sufficient goodwill and misrepresentation.

Citation
[2012] EWHC 3074 (Ch)
Parties
Claimant: Starbucks (HK) Limited; Claimant: PCCW Media Limited; Claimant: UK Broadband Limited; Defendant: British Sky Broadcasting Group PLC; Defendant: British Sky Broadcasting Limited; Defendant: Sky IP International Limited
Jurisdiction
England and Wales
Judgment Date
02 November 2012
Procedural Posture
Intellectual Property (trade Mark) Infringement and Passing Off / First Instance Judgment After Expedited Trial
Outcome
Claim dismissed; counterclaim for invalidity of CTM succeeds.
Legal Topics
Community Trade Mark Regulation, Distinctiveness, Descriptiveness, Likelihood of Confusion, Passing Off, Invalidity Counterclaim
Intellectual Property Trade Marks Unfair Competition Community Trade Mark Regulation Distinctiveness Descriptiveness Likelihood of Confusion Passing Off +1 more

Case Brief

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Parties

Starbucks (HK) Limited

Claimant

PCCW Media Limited

Claimant

UK Broadband Limited

Claimant

British Sky Broadcasting Group PLC

Defendant

British Sky Broadcasting Limited

Defendant

Sky IP International Limited

Defendant

Procedural Posture

Intellectual Property (trade Mark) Infringement and Passing Off / First Instance Judgment After Expedited Trial

Legal Issues

  1. 1 Whether Sky's use of 'NOW TV' infringes the Community Trade Mark No. 4504891 under Article 9(1)(b)
  2. 2 Whether the CTM is invalid under Article 7(1)(b) and (c) for lack of distinctiveness and descriptiveness
  3. 3 Whether Sky's use amounts to passing off

Ratio Decidendi

The CTM is invalid under Article 7(1)(c) as it is descriptive of the services and under Article 7(1)(b) as it is devoid of distinctive character. The mark had not acquired distinctiveness in the UK by the relevant date. There is no likelihood of confusion between Sky's use and any residual goodwill of the claimants in the UK, and the claim for passing off fails for lack of sufficient goodwill and misrepresentation.

Court Disposition

Claim dismissed; counterclaim for invalidity of CTM succeeds.

Orders

  • Declaration that Community Trade Mark No. 4504891 is invalid under Article 7(1)(b) and (c)
  • Dismissal of PCCW's claims for infringement and passing off