Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31
The Supreme Court has considered the difficult question as to when an overseas business can rely upon the goodwill in its name to restrain acts of passing off in the UK.
The Appellants ran a very successful TV subscription service under the name “NOW TV” in Hong Kong. That service enjoyed a reputation amongst members of the Chinese speaking community in the UK and was accessed and enjoyed for free in the UK via the internet. In 2012, the Respondents launched their “NOW TV” service in the UK. The Appellants sued for passing off. The key issue was whether the Appellants could establish goodwill in the jurisdiction.
The Supreme Court reaffirmed the rule that to succeed in a passing off action it is necessary for a claimant to establish a goodwill in the jurisdiction and, to do so, it must demonstrate the presence of clients or customers in the jurisdiction for the goods and services concerned. It was held that the Appellants could not rely upon the reputation that they enjoyed in the UK. Whilst people in the UK accessed the Appellants’ services in the UK such people were not “customers” within the jurisdiction because they received the services for free.
Michael Silverleaf QC and Kathryn Pickard appeared for the Appellants. Iain Purvis QC appeared for the Respondents.
Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31