High Court is content with BSkyB using “NOW”

The High Court has given its judgment in the case of Starbucks and others v BSkyB¹ in relation BSkyB’s internet television service “NOW TV”. Starbucks had claimed the use of this name would constitute trade mark infringement and passing off in relation to its “now” trade mark and previous use of the name “NOW” for similar services. For additional background, see OBEP’s article of 27 July: “now” is the trade mark of their discontent: Starbucks v BSkyB. On 2 November 2012, the Court ruled that BSkyB’s use of the name “NOW TV” does not infringe Starbucks’ and related parties’ rights.

Since July, in order to strengthen the passing off claim, Starbucks had joined related Hong Kong and UK group entities to the action, as parties who had been using the name “NOW” in relation to the relevant services.

Trade mark claim

Starbucks’ trade mark consisted of the word “now” with a figurative element associated with the “o”. The judge considered that the word “NOW” would be understood by the average consumer to describe a characteristic of the service for which it is registered, namely the “immediate, instant nature of the service”. The figurative element of the mark was not sufficiently distinctive to affect this conclusion, or to make the mark as a whole distinctive. On this basis, the trade mark registration was invalid for reasons of descriptiveness and lack of distinctiveness. Therefore, there was no trade mark infringement by BSkyB.

The Court also considered whether BSkyB would be infringing the trade mark should it be valid. The judge considered there would be no infringement, as the distinctive part of the mark would be the figurative element, which was not being copied. Only if the word “NOW” were considered inherently distinctive would infringement arise.

Passing off claim

The judge considered whether there was relevant goodwill and likelihood of confusion (both required elements of a passing off claim) separately for each of the three claimants (who had made different use of the term “NOW” - see OBEP’s previous article for detail).

It was decided that only very limited (if any) goodwill currently subsisted in the UK in relation to use of the “NOW” mark. To the extent goodwill did exist, the judge did not consider there was a likelihood of confusion in relation to the claimant’s broadband service. However, for the claimant’s internet television service there may be a likelihood of confusion amongst the relevant viewers.

Other interesting points were raised in relation to the subsistence of goodwill:

• Mere accessibility of a website was insufficient to give rise to protectable goodwill; the party claiming goodwill would have to show they had customers in the UK. Whilst these need not be paying customers (i.e. a free service could suffice), in relation to internet television, someone viewing programme content in the UK may not be a relevant “customer”.
• There was no reason why protectable goodwill could not exist as a result of a reputation which only exists amongst a minority section of the population (in this case, an ethnic minority whose mother tongue was a foreign language).
• Goodwill can arise from advertising and promotion of a service which is not yet being provided.

Olivia Whitcroft, principal of OBEP, 8 November 2012

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This article provides general information on the subject matter and is not intended to be relied upon as legal advice. If you would like to discuss this topic, please contact Olivia Whitcroft using the contact details set out here: Contact Details