New Judgment: Starbucks (HK) Ltd & Anor v British Sky Broadcasting Group plc & Ors  UKSC 31
13 Wednesday May 2015
On appeal from:  EWCA Civ 1465
The Court unanimously dismissed the appeal regarding a claim against trade mark infringement and passing off.
The appellants began proceedings seeking to prevent the respondents from using the name “NOW TV” in connection with its internet protocol television service in the UK on the grounds that the use of the name amounted to “passing off”, in light of their closed circuit internet protocol television service in Hong Kong which has been marketed and delivered under this name since 2006. At first instance the judge found that a substantial number of Chinese speakers permanently or temporarily resident in the UK were acquainted with the appellant’s “NOW TV” service and its reputation was modest but more than de minimis. However he stated that the important question was whether the viewers in the UK were “customers”, as reputation alone was not enough; he therefore dismissed the claim, as did the Court of Appeal.
In giving the leading judgment Lord Neuberger stated that courts in the UK have consistently held that it is necessary for a claimant to have actual goodwill, in the sense of a customer base, in this jurisdiction before it can satisfy the requirement for the law of passing off. He reasoned that the law of passing off strikes a balance between the public interest of free competition and the protection of the trader against unfair competition. If it were enough for a claimant to merely establish reputation in the jurisdiction without having a significant number of people who are customers, it would tip the balance too much in favour of protection for the trader. Lord Neuberger clarified that those in the UK who get access to the appellant’s service were not customers because there was no payment involved and the availability of the product was intended to promote their Hong Kong business.