Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors

Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group Plc & Ors

The CTM is invalid under Article 7(1)(c) as 'NOW' is descriptive of the instant, immediate nature of the services; alternatively, it lacks distinctive character under Article 7(1)(b). PCCW failed to establish protectable goodwill in the UK for passing off. Even if the CTM were valid, Sky's use did not infringe it, and Sky would not have a defence under Article 12(b).

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 / Final Judgment
Outcome
Claim dismissed; CTM declared invalid; Sky's counterclaim succeeds.
Legal Topics
Trade Mark Infringement, Passing Off, Community Trade Mark Regulation, Distinctiveness, Descriptive Marks
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Community Trade Mark Regulation Distinctiveness Descriptive Marks

Case Brief

Summary, issues, holding and outcome

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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 / Final Judgment

Legal Issues

  1. 1 Whether the Community Trade Mark (CTM) No. 4504891 is valid under Article 7(1)(b) and (c) of the CTM Regulation
  2. 2 Whether Sky's use of 'NOW TV' infringes the CTM
  3. 3 Whether PCCW has goodwill in the UK sufficient for a passing off claim

Ratio Decidendi

The CTM is invalid under Article 7(1)(c) as 'NOW' is descriptive of the instant, immediate nature of the services; alternatively, it lacks distinctive character under Article 7(1)(b). PCCW failed to establish protectable goodwill in the UK for passing off. Even if the CTM were valid, Sky's use did not infringe it, and Sky would not have a defence under Article 12(b).

Court Disposition

Claim dismissed; CTM declared invalid; Sky's counterclaim succeeds.

Orders

  • CTM No. 4504891 declared invalid under Article 7(1)(c) and (b) of the CTM Regulation.
  • PCCW's claims for infringement and passing off dismissed.