King & Wood Mallesons SJ Berwin Intellectual Property team acted for Sky in its successful defence to a claim for trade mark infringement and passing off (the law that protect unregistered trade marks in the UK) brought against it following the launch of NOW TV, its OTT internet television service. The claim was brought by Starbucks (HK) Limited (no relation to the coffee chain) and other members of the Hong Kong broadcasting group PCCW, which operate a “now” television service in Hong Kong.

In its judgment handed down this morning, the Court of Appeal has unanimously upheld the November 2012 decision of Mr Justice Arnold, namely that:

 > PCCW's Community trade mark for “now” is invalid as it is descriptive and non-distinctive. “now" would be understood by the average consumer as a description of the characteristics of the instant, immediate nature of the services in issue (i.e. online TV services); and
 > PCCW had no goodwill or customers in the UK and therefore no protectable right under the law of “passing off”. PCCW had uploaded some of its television programmes to YouTube and sought to rely on the fact that these had been viewed from the UK but the Court of Appeal confirmed that UK viewers of this material could not be considered customers of PCCW and its access from the UK was not sufficient to generate any goodwill.

The King & Wood Mallesons SJ Berwin team - which included partners David Rose and Robert Guthrie - was instructed by Simon MacLennan, Group Head of IP at Sky. The firm retained Geoffrey Hobbs QC and Guy Hollingworth, both of One Essex Court.

David Rose, head of Intellectual Property at King & Wood Mallesons SJ Berwin said: "Sky welcomes the decision of the Court of Appeal which fully endorsed the decision of Mr Justice Arnold at first instance. The decision confirms that PCCW has no protectable rights in the UK: its “NOW” trade mark registration was held to be descriptive and therefore invalid, whilst the mere fact that some of the PCCW’s content could be accessed in the UK did not give rise to a protectable goodwill for the purposes of a passing off claim.”