NEWS Starbucks’ Now TV appeal rejected


Te England & Wales Court of Appeal has dismissed Hong Kong media company Starbucks’ claims of trademark infringement and passing off against rival BSkyB (Sky).


Mr Justice Arnold ruled last year that Sky’s Internet TV service named Now TV did not infringe Starbucks’ Community trademark (CTM) for ‘Now’ because the registration is invalid.


And he found that Sky’s offering, launched in March 2012, was not passing off Starbucks’ online TV service, also called Now TV.


Starbucks is not associated with the US coffee company of the same name.


In a ruling on November 15, Sir John Mummery and Lord Justices Patten and Pitchford swept aside Starbucks’ appeal.


Writing for the court, Mummery noted there were six reasons for dismissing Starbucks’ trademark appeal, the first that the ‘Now’ CTM is devoid of distinctive character.


“It is not inherently distinctive of the claimant’s TV service nor is it alleged to have become distinctive here by use made of the mark,” he said.


Mummery added that by choosing ‘Now’ as a trademark, Starbucks was “running the risk of invalidity on the ground that the message that was


conveyed or could be conveyed by the everyday word to the average consumer designated a characteristic of that service”.


Starbucks’ passing off claims had been rejected because UK Internet users viewing Starbucks’ Now TV programmes were not seen as the company’s customers. Te customers, Arnold said, were the viewers targeted for business in Hong Kong.


Mummery continued: “In this case 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. All that happens in the UK is the viewing of the programmes coming from Hong Kong.


“Tere is more to establishing a goodwill in a market for the supply of a TV service than evidence that the programmes in the service can be viewed by members of the public who do not need the service.”


Te case shows it is dangerous to use ordinary English words that are potentially descriptive of the chosen goods and services and expect to enforce your trademarks, said Ian Starr, partner at D Young & Co LLP.


He added: “It confirms that goodwill (rather than simply reputation) is needed on a country basis to find a passing off action, notwithstanding the global nature and reach of the Internet. Tere must


be actual or likely potential customers in the UK for a service such as a TV service: merely being able to access the foreign service is not enough.


“Tis might come as a surprise to some companies who use the Internet to advertise or sell their wares and who might have a reputation based on their global sales but with minimal goodwill based on sales or advertising in the UK,” Starr said.


Catherine Wolfe, president of the Institute of Trade Mark Attorneys, said the ruling “reminds us of two crucial points”.


“First, to recall that every case in passing off must turn on its own specific facts and evidence: each case is unique. But second, we should all take a key and practical lesson here: that the decisions of Arnold J are clear and accurate, and are likely to be upheld, and rightly so.”


David Rose, head of IP at King & Wood Mallesons SJ Berwin, which represented Sky, said: “Tis case revisits, in the Internet age, what is required to have a protectable goodwill in the UK. Te Court of Appeal has confirmed that the mere ability to access, from the UK, websites and content located overseas is not sufficient to generate goodwill, but that something more must be done to make a business connection with customers with a view to transacting business with them.”


Dechert LLP, which is acting for Starbucks, could not provide a comment when TB&I went to press. 


Baidu facing multi-million dollar lawsuit for alleged copyright infringement


A group of Chinese companies have joined forces to issue search engine Baidu with a multi-million dollar lawsuit.


Te lawsuit, which has been pursued by a group of China’s biggest online content providers, including Sohu, Tencent, LeTV and Youku Tudou, calls for damages stretching to around RMB 300 million ($49.2 million).


Together, the companies form the Joint Action Against Online Video Piracy in China, which includes US organisation Te Motion Picture Association of America.


On November 13, it announced a declaration in capital city Beijing, and promised to fight online piracy on computers and mobile phones.


Te group claims Baidu, alongside technology


firm QVOD, which runs a video player that allows streaming from the Internet, is providing access to pirated videos by using soſtware to obtain it from other sources.


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piracy, and jointly promote the process of genuine networks”.


Sister publication WIPR reported that Baidu, the Chinese equivalent of Google, shut down its newly- launched online shopping mall aſter only 24 hours amid fears of copyright infringement.


"Baidu is distributing content without authorisation while engaging in activities that are beyond the scope of a search engine,” the group said in a statement.


“Via hotlinks, users are able to access content hosted on third party sites. Such content can be viewed using Baidu video applications while Baidu takes advantage of licensed content, storage and bandwidth of third party video sites.”


Victor Koo, chairman of China’s largest video- content website Youku Tudou, said in a statement he hoped more people, “together with government, authorities and copyright holders” would join in the campaign and “strengthen cooperation … combat


Trademarks Brands and the Internet Volume 2, Issue 4


Baidu could not be reached for comment as we went to press, however, according to reports in China, it responded to the issue in a statement posted on its Sina Weibo account, the Chinese equivalent of microblogging website Twitter.


“Baidu Video has always attached great importance to copyright protection in the video industry,” the posting said.


“Since the beginning of last year, the company has taken many measures against piracy, including an automatic screening system to eliminate pirated videos, a platform to receive complaints about piracy and refusing to recommend pirated videos to users.” 


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