Broadcasting group Starbucks (HK) Ltd is making a final bid to win its trademark battle against British Sky Broadcasting (BSkyB) after being granted permission to appeal an earlier ruling at the Supreme Court.
The two broadcasters will go head-to-head in the Supreme Court over whether the Hong Kong-based Starbucks can claim ownership of the community trademark (CTM) ‘now’ in the UK because some of its programmes are accessible in the UK via the internet.
Starbucks turned to Dechert to launch its passing off suit against BSkyB in 2012 after BSkyB launched its own internet protocol TV service in the UK under the brand ‘NOW TV’. Partner Paul Kavanagh is leading the claim.
BSkyB responded by instructing King & Wood Mallesons SJ Berwin (KWM SJB) partners David Rose and Robert Guthrie.
The CoA upheld the High Court’s decision that the Starbucks did not have a valid CTM or any goodwill in the UK that would give the it the right to stop BSkyB using the brand ‘NOW TV’ for its internet protocol TV service. The appeal considered the requirement of distinctiveness for a CTM to be valid and whether a reputation built up outside the UK could give rise to goodwill in the UK on which to base a claim for passing off (see ruling).
Starbucks has now been granted permission to take its case to the final court.
The company reserved the right to ask the court whether there was a legal requirement for there to be customers in the UK to succeed in a passing off claim in light of comments by Lord Justice Lloyd in Hotel Cipriani Srl v. Cipriani (Grosvenor Street). Handing down his ruling in the case he said it might be salutary to review the requirement for customers to be in the UK for the kinds of service providers operating from abroad.
The CoA 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