BSkyB Victory Over Now TV Use – 27.9.13

Introduction

In a recent decision, the Court of Appeal handed down Judgment that BSkyB’s use of the name “Now TV” in relation to its internet TV and on demand services could continue and that the trademark “Now TV” registered in the name of Starbucks (HK) Limited (no relation to the coffee chain) was invalid.

Background

Starbucks is a Hong Kong based media group who provide internet TV and on demand services under the name “Now TV”.  They broadcast in Hong Kong but some of the programmes are available in the UK over the internet.

Starbucks own a trade mark for “Now TV” in respect of television and communication services.

In 2012 BSkyB announced and launched its “Now TV” internet and on demand TV service and Starbucks subsequently sued BSkyB for infringement of its registered trade mark.

Decision

The Court held that the Starbucks trade mark was invalid as the use of the word “now” was descriptive of the goods or services provided because it described the immediacy of the TV services that were available. As such the word was purely descriptive and without any distinctive character.

Conclusion

The case is a useful illustration of a well-known legal issue regarding how to name new products and services.  Businesses should take care when launching new products and services to ensure that any name they give to them is distinctive and not descriptive of the products or services provided.

If you have any concerns regarding any of the above, or require any advice in respect of trade mark infringement or intellectual property rights generally, please call a solicitor in our Intellectual Property Department on 0161 969 3131.