Starbucks (UK) Ltd v British Sky Broadcasting, Court of Appeal
Starbucks (a Hong Kong-based media group and not the coffee shop chain) issued proceedings against Sky alleging that Sky’s use of the words “NOW TV” had infringed a European Community Trade Mark (CTM) which contained those words in lower case, where the “o” took on the shape of a star. Starbucks’ CTM had been registered for telecommunications and broadcasting services under trade mark class 38, and used it for its business in Hong Kong. Starbucks claimed that Sky’s use of the specific marks for its new “IPTV” service, called “NOW TV”, infringed the CTM. Starbucks also claimed for passing off by Sky. Sky counterclaimed and alleged that Starbucks’ CTM was invalid.
The High Court decided that Starbucks’ CTM was in fact invalid, as the average consumer would understand “NOW” as describing a characteristic of a service, and the CTM was devoid of distinctive character. The High Court added that the only reason the CTM had been registered because of specific figurative elements that were included in the CTM, and none of those elements had been infringed by Sky’s marks, so there was no trade mark infringement. The High Court also rejected the claim for passing off, due largely to the limited goodwill that Starbucks had amassed in the UK.
The case was appealed, but the Court of Appeal has now upheld the High Court’s decision. “NOW” was capable of being used descriptively, so could not be validly registered. As regards passing off, a claimant had to show evidence of goodwill within the jurisdiction of the court. Goodwill obtained elsewhere would not be sufficient. Merely using the Internet to access programmes of a named service on a website would not satisfy the basic requirements of being a customer or forming part of goodwill of a business.
