Starbucks (HK) Ltd v British Sky Broadcasting Group Plc
Starbucks HK Ltd lost an appeal this month against a decision dismissing its action for passing off and trade mark infringement for the CTM ÂNOWÂ, they also lost an appeal against the granting of a counterclaim to the media company Sky Broadcasting Group for invalidity of their CTM.
Starbucks had generated goodwill in Hong Kong in relation to its online television service and intending to break into the U.K market, registered the CTM ÂNOW TVÂ.
Sky later declared it intended to launch a new, stand-alone, internet based television service in the UK called ÂNOW TVÂ. In response, Starbucks decided to bring an action for passing off and trade mark infringement, Sky then counterclaimed for invalidity of the CTM.
In the appeal Starbucks argued that the judge was wrong to have found:
- The sign invalid.
- That they had not generated protectable goodwill in the U.K.
Starbucks claimed that although the goodwill it had generated in relation to its trade mark originated from consumers in Hong Kong, it had spread geographically to Chinese-speaking residents in the U.K.
The appeal was dismissed on the following grounds:
- The judge was correct to have found that the wordÂ ÂNowÂ was a descriptive characteristic of the service onÂ which theyÂ intended to use the mark, therefore the mark could not be validly registered.
- In relation to the passing off, the goodwill acquiredÂ was insufficient, what had to be shown was that the goodwill acquired by Starbucks was in relation to the jurisdiction of the court i.e. theÂ U.K.
The CourtÂ commented that it was possible to establish goodwill in the supply of a service, even if the service was made available for free and further, even if the service was supplied to a section of the public that was a foreign speaking ethnic minority.