Infringement – Defendant seeking to launch television service called 'NOW TV'
Starbucks (HK) Ltd and other companies v British Sky Broadcasting Group plc and other companies: Chancery Division (Mr Justice Arnold): 2 November 2012
The claimants (together PCCW) were members of a substantial Hong Kong-based group of broadcasting, media and telecommunications companies. The defendants (SKY) were members of a well-known group of broadcasting and telecommunications companies.
In March 2012, SKY announced that they intended to launch a new standalone internet protocol television service under the name 'NOW TV'. They subsequently launched that service in beta form in July 2012. PCCW brought proceedings against Sky alleging that the use of that name infringed its community trademark (the CTM) and amounted to passing off. The CTM was a figurative mark which comprised the word 'now' in lower-case letters. It was registered for a wide array of goods and services in classes 9, 35, 38, 41 and 42, including the following services in class 38: 'Telecommunication services; telecommunication of information (web pages), computer programs and data; ... radio and television broadcasting services; broadcasting and transmission of radio and television programmes; cable television broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games.'
None of the signs used by SKY, which were complained about, included anything like the figurative elements of the CTM. The only common element was the word: 'NOW'. There was no dispute that the signs had been used in relation to services identical to those covered by the CTM. Sky denied infringement and counterclaimed for a declaration that the CTM was invalid in that the word 'NOW' lacked distinctive character. The issues for consideration were: (i) whether the CTM was precluded from registration by article 7(l)(c) of Council Regulation (EC) 207/2009 (on the community trademark (the Regulation) and therefore invalid); (ii) whether Sky's use of the word 'NOW' was within article 9(1)(b) of the Regulation in that there was no likelihood of confusion with the CTM; (iii) if the CTM was valid, whether Sky had a defence under article 12(b) of the Regulation; and (iv) whether PCCW's claims for passing off had been established.
The court ruled: (1) In the instant case, the CTM was invalid. The word 'NOW' had been widely used entirely descriptively in the sector. Taking all of the evidence into account, the CTM was precluded from registration by article 7(l)(c) in relation to the services in issue because 'NOW' would be understood by the average consumer as a description of a characteristic of the service, namely the instant, immediate nature of the service. The figurative elements of the CTM did not affect that conclusion. In the alternative, if the inclusion of the figurative elements meant that the CTM did not consist exclusively of the unregistrable word NOW, the CTM was devoid of distinctive character and thus unregistrable by virtue of article 7(l)(b) of the Regulation (see , ,  of the judgment). The CTM was invalid under article 7(1)(c), alternatively article 7(l)(b), of the Regulation (see  of the judgment). Agencja Wydawnicza Technopol sp z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM): C-51/10 P  All ER (D) 172 (Mar) considered.
(2) In respect of article 9 of the Regulation, even if the CTM was valid, it had not been infringed. None of the signs included anything like the figurative elements of the CTM. The only common element was the word: 'NOW'. It followed that there was no likelihood of confusion (see  of the judgment). Even if the CTM was valid, Sky would had not infringed it (see  of the judgment).
(3) If the CTM was valid and if the use by Sky of the signs complained of was within art 9(l)(b), then that use would not be saved by article 12(b) of the Regulation. Sky were aware of the CTM before adopting the signs complained of. On the facts, Sky would not have a sufficient justification for using the signs complained of and their use amounted to unfair competition, and not use in accordance with honest practices (see  of the judgment). If the CTM was valid and Sky's use was within article 9(1)(b) of the Regulation, Sky would not have a defence under article 12(b) of the Regulation (see  of the judgment). Gerolsteiner Brunnen GmbH & Co v Putsch GmbH: C-100/02  All ER (D) 21 (Jan) considered.
(4) It was settled law that the necessary elements for a claim in passing off included: (i) that the claimant's goods or services had acquired a goodwill in the market and were known by some distinguishing name, mark or other indication; (ii) that the defendant has used, or threatens to use, a name, mark or other indication which had led, or was likely to lead, the public to believe that goods or services offered by the defendant were goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and (iii) that the claimant had suffered, or was likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation.
It was further settled law that, where a trader adopted words in common use for his trade name, some risk of confusion was inevitable. The risk had to be run unless the first user was allowed unfairly to monopolise the words. The court would accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination might fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered (see ,  of the judgment).
Applying settled law to the instant case, the claim for passing off failed. The cumulative effect of a number of factors was that there was no likelihood of confusion amongst a substantial number of persons (see - of the judgment). PCCW's claims for passing off would fail (see  of the judgment). Office Cleaning Services Ltd v Westminster Office Cleaning Association  1 All ER 320n applied; Reckitt & Colman Products Ltd v Borden Inc  RPC 341 applied; Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd  All ER (D) 94 (Dec) considered; Plentyoffish Media Inc v Plenty More LLP  All ER (D) 92 (Oct) considered.
Michael Silverleaf QC and Richard Hacon (instructed by Dechert LLP) for PCCW; Geoffrey Hobbs QC and Guy Hollingworth (instructed by SJ Berwin LLP) for Sky.