KWM SJB scores appeal court win for BSkyB against Dechert client

King & Wood Mallesons SJ Berwin (KWM SJB) has defeated Dechert in the Court of Appeal in a trademark battle for British Sky Broadcasting (BSkyB).

KWM SJB partners David Rose and Robert Guthrie instructed One Essex Court’s Geoffrey Hobbs QC for the broadcaster in its response to an appeal by broadcasting group Starbucks (HK), which operates a “now” television service in Hong Kong.

Dechert partner Paul Kavanagh led the appeal for Starbucks (HK) instructing 11 South Square’s Michael Silverleaf in the passing off claim against BskyB over the ‘now’ internet TV service.

The Hong Kong broadcaster, which owned a community trade mark (CTM) covering television and telecommunication services for the word “now”, launched the case in 2012 after BSkyB launched its own internet protocol TV service in the UK under the name ‘NOW TV’.

The CoA upheld the first instance ruling that the Hong Kong broadcaster could not enforce the CTM on the basis that it was descriptive and non-distinctive.  The word “now” would be understood by the average consumer to be descriptive of the services provided, the CoA ruled.

The judgment stated: “The claimants chose as their trade mark a commonplace, easily understood, ordinary English word, which was also used by other undertakings in relation to other products or services. There was evidence that “now” is reckoned to be the 73rd most common word in the English language.”

There was also no ground for an appeal on passing off claims against BSkyB, the appeal court said, because Starbucks’ owner, PCCW Media, had no goodwill in the UK and therefore no protectable right under the law of “passing off”.

The appellants had argued that because it had uploaded content onto YouTube that had been vieed in the UK it did have a UKpresence. The court responded that PCCW had failed to generate enough hits for it to be considered a sufficient audience.

The legal line-up:

For the appellant, (1) Starbucks HK Ltd; (2) PCCW Media Ltd

Dechert partner Paul Kavanagh instructing 11 South Square’s Michael Silverleaf QC leading Richard Hacon of the same set

For the respondent, BSkyB

KWMSJB David Rose and Robert Guthrie instructed One Essex Court’s Geoffrey Hobbs QC leading Guy Hollingworth of the same set