Starbucks (HK) Ltd & Anor vBritish Sky Broadcasting Group Plc & Ors

Starbucks (HK) Ltd & Anor vBritish Sky Broadcasting Group Plc & Ors

The word mark 'NOW' is not registrable as a Community Trade Mark because it is descriptive of the instant, immediate nature of the service and lacks distinctive character. The claimants did not have protectable goodwill in the UK at the relevant date as they had no UK customers or targeted business activity; mere accessibility of their programmes online by UK viewers does not suffice for passing off.

Parties
Appellant: Starbucks (HK) Limited; Appellant: PCCW Media Limited; Respondent: British Sky Broadcasting Group PLC; Respondent: British Sky Broadcasting Limited; Respondent: Sky IP International Limited
Jurisdiction
England and Wales
Judgment Date
15 November 2013
Procedural Posture
Civil Appeal / Appeal From High Court Judgment
Outcome
appeal dismissed
Legal Topics
Trade Mark Validity, Distinctiveness, Descriptiveness, Territoriality of Goodwill, Internet Broadcasting, Customer Requirement in Passing Off
Intellectual Property Trademarks Passing Off Trade Mark Validity Distinctiveness Descriptiveness Territoriality of Goodwill Internet Broadcasting +1 more

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Parties

Starbucks (HK) Limited

Appellant

PCCW Media Limited

Appellant

British Sky Broadcasting Group PLC

Respondent

British Sky Broadcasting Limited

Respondent

Sky IP International Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment

Legal Issues

  1. 1 Whether the word mark 'NOW' is validly registered as a Community Trade Mark under the CTM Regulation
  2. 2 Whether the claimants had protectable goodwill in the UK sufficient to support a passing off claim

Ratio Decidendi

The word mark 'NOW' is not registrable as a Community Trade Mark because it is descriptive of the instant, immediate nature of the service and lacks distinctive character. The claimants did not have protectable goodwill in the UK at the relevant date as they had no UK customers or targeted business activity; mere accessibility of their programmes online by UK viewers does not suffice for passing off.

Court Disposition

appeal dismissed

Orders

  • Appeal dismissed on both trade mark and passing off claims.
  • Arnold J's decision upheld in full.