The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a substantial number of Chinese speakers permanently or temporarily resident in the UK were acquainted with PCCM’s NOW TV service through exposure to it when residing in or visiting Hong Kong. He also found that PCCM’s NOW TV service had acquired a reputation amongst members of the Chinese-speaking community in the UK, based on their exposure to it via PCCM’s NOW TV ‘channel’ on the YouTube website and PCCM’s NOW TV websites (together ‘the websites’) as well as the showing of PCCM’s programmes on international flights. Arnold J held that this reputation was modest but more than de minimis. However, it was not sufficient for PCCM to identify a body of people in the UK who associated the mark NOW TV with its IPTV service in Hong Kong: they were not customers in the UK, and therefore did not represent goodwill in the jurisdiction. He also considered that the mere accessibility of PCCM’s material in the UK via the websites did not give rise to a protectable goodwill, stating that ‘the key question is whether the viewers of PCCM’s programmes in the [UK] were customers for its service so as to give rise to a protectable goodwill in the UK’
‘i) The CTM is invalid under Article 7(1)(c), alternatively Article 7(1)(b), of the CTM Regulation.
ii) Even if the CTM is valid, Sky have not infringed
iii) If the CTM were valid and Sky’s use was within Article 9(1)(b) of the CTM Regulation, Sky would not have a defence under Article 12(b).
iv) PCCW’s claims for passing off fail.’
Judges:
Arnold J
Citations:
[2012] EWHC 3074 (Ch), [2013] FSR 29
Links:
Statutes:
Council Regulation 207/2009/EC
Jurisdiction:
England and Wales
Citing:
See Also – Starbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others CA 13-Sep-2012
. .
Cited by:
At ChD – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
At ChD – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 06 November 2022; Ref: scu.465532