Yesterday the UK Supreme Court gave judgment in Starbucks (HK) Ltd & Another v British Sky Broadcasting Group PLC & Others [2015] UKSC 31, in a dispute that initially focused on trade marks but which raised an important issue of principle with regard to the common law of passing off -- the rules that protect both registered and unregistered trade marks and which may be of great strategic value in seeking to protect a name or likeness.

In short, the Supreme Court affirmed what most British practitioners have always assumed to be the case, which is that a caimant in a passing off claim must establish not only that has a reputation in its name or other indicia of trade but that it also has actual goodwill in the jurisdiction -- and that such goodwill involves the presence of clients or customers in the jurisdiction for the products or services in question.  In this context, "reputation" is the fact that consumers know of a mark or a name, while "goodwill" is the fact that, because they know the mark or name, they make a commercial decision which is based on it, since "goodwill" is effectively the attractive force of a mark or name that brings in customers.

In this dispute both parties were media companies [the 'Starbucks' in this action is nothing to do with coffee shops]. Starbucks was based in Hong Kong, where it provided a popular internet protocol television (IPTV) service called NOW TV. Though it was the largest pay TV operator in Hong Kong, it could not be received by viewers in the UK. However, it had a reputation in the UK since a number of Chinese speakers who were resident in the UK were aware of it. There were plans to make some of its programmes available in the UK via the internet and through airline video-on-demand services. Indeed, in June 2012, a 'NOW TV' app was launched in the UK. 

In July 2012, Sky launched a new IPTV service in the UK under the name NOW TV. The claim that use of that name amounted to passing off was dismissed on the basis that the Hong Kong business no protectable goodwill in the UK because its customers were its viewers in Hong Kong. The Court of Appeal dismissed the appeal and now the Supreme Court has agreed with the lower courts.