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IP Cases & Commentary – Details

02 November 2012

NOW is the Winter of (Starbucks’ HK’s) Discontent

Ian Starr

These opening lines from William Shakespeare’s Richard III may be felt appropriate by Starbucks (HK) Ltd and PCCW in their trade mark infringement battle with BSkyB (“SkyTV”) - and not just because of the time of year.

The background is that Starbucks HK had a CTM registered (from 2005) for “now” (in a slightly stylised form) for “television communication services” (amongst others). This CTM had been licensed to PCCW which had used the mark in the UK, albeit only in a small way and not that recently.

Sky TV launched a “NOW TV – powered by SKY” internet TV service in March 2012. Starbucks sued and a speedy trial was ordered.

After a full trial, the Judge (Arnold J.) found entirely in SkyTV’s favour deciding that:

  1. the CTM registration was invalid as it was an indicative of a service that was immediately available (i.e. “I want it now!!”) and therefore prevented from registerability under Article 7(1)(c ) CTM Regulation;
  2. the CTM would also have been invalid under Article 7(1)(b) as it was “devoid of distinctive character” as a normal English word descriptive of these services;
  3. even if the CTM had been valid it was not infringed as SkyTV was not using the stylised mark in the form registered but the ordinary English word NOW in the phrase “NOW TV”. The Judge was critical of the fact that the CTM had been registered at all with the “figleaf” of a figurative element, given that what was really being protected (and sought to be enforced) was the word “now”;
  4. a related passing off action failed on its facts – mostly because the use by PCCW and its licensees had largely finished well before 2012 and what was left was very small.

What is legally most interesting in the judgment is the comment made by the Judge about the fact that having a figleaf of a figurative element which succeeds in persuading OHIM to register an otherwise unregisterable mark will be blown away by, at least, an English Court if the word mark itself does not qualify for protection. The Judge clearly felt that OHIM should be more careful in future cases. Whether OHIM will itself change its practice is more doubtful.

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