UK Supreme Court hears Starbucks v BSkyB passing off case

The UK’s highest court is hearing arguments today (March 26) in a passing off case between Hong Kong-based media company Starbucks and broadcaster British Sky Broadcasting (BSkyB).

The case, Starbucks (HK) Limited and Anor v BSkyB Group, which is taking place at the UK Supreme Court, centres on passing off and trademark infringement claims brought by Starbucks.

The claims have previously been rejected by both the English High Court and Court of Appeal.

Starbucks—which has no association with the US coffee franchise—has claimed that BSkyB’s online broadcast service Now TV, launched in March 2012, traded on the goodwill of its own internet streaming service called Now.

Starbucks also claimed that BSkyB has infringed a Community trademark (CTM) it owns for the word ‘Now’ by naming its service Now TV.

In a ruling handed down in November 2012 at the English High Court, Judge Richard Arnold ruled that BSkyB was not liable for passing off or trademark infringement.

A year later, Sir John Mummery of the English and Wales Court of Appeal affirmed Arnold’s ruling, and also ruled that Starbucks’s ‘Now’ CTM was devoid of distinctive character.

He said: “The registered word mark ‘Now’ is devoid of distinctive character that would serve to identify the claimant's service”.

He added that the word 'now' “is reckoned to be” the 73rd most common word in the English language.

In its passing off claim, Starbucks had argued that the internet ensured customers could access the service from the UK.

But Mummery rejected this, stating that the “universal presence and accessibility of the internet ... is not a sufficiently close market link to establish an identifiable goodwill with a customer base here”.

Five of the 12 Supreme Court judges are currently hearing the case. They are: Lord Neuberger, Lord Sumption, Lord Carnwath, Lord Toulson and Lord Hodge.

WIPR will provide updates on the case as it progresses.