Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others, High Court
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 Starbuck’s CTM was not valid.
The High Court ruled that Starbucks’ CTM was 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.