In its Judgment handed down on 15 November 2013, the Court of Appeal dismissed the claimants’ appeal against the decision of Arnold J which had rejected their claims of trade mark infringement and passing off.
The claimants were members of a group of Hong Kong-based broadcasting, media and telecommunications companies called the PCCW group. Since at least 2006, companies in the claimants’ group had broadcast in Hong Kong an internet protocol TV service (IPTV) under the name “NOW TV.” Proceedings were issued is response to the announcement on 21 March 2012 by the defendants, British Sky Broadcasting, of a new, stand-alone internet protocol television service in the UK under the name “NOW TV.”
The trade mark claim was for exclusive use of the word NOW, registered as a Community Trade Mark, for various goods and services, including television broadcasting services. The Court of Appeal agreed with Arnold J that the registered word mark NOW was devoid of distinctive character that would serve to identify the claimants’ service and to distinguish it from the service offered by other undertakings. It was not inherently distinctive of the claimants’ TV service nor was it alleged to have become distinctive by use made of the mark. The registration was accordingly invalid.
As to the passing off claim, the Court of Appeal confirmed that, in proceedings brought in England, the claimants must establish by evidence the existence of the claimed goodwill within the jurisdiction of the court. The universal presence and accessibility of the internet, which enabled access to be gained in the UK to programmes emanating from Hong Kong, was not a sufficiently close market link to establish an identifiable goodwill with a customer base here. The Court of Appeal therefore agreed with Arnold J that the passing off claim also failed.
Geoffrey Hobbs QC and Guy Hollingworth, instructed by King & Wood Mallesons LLP, acted for the successful defendants.
Full text of the Judgment available here.