In Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others  EWHC 3074 (Ch) the High Court of England and Wales has held that Starbucks’ figurative Community Trade Mark (CTM) was descriptive and therefore invalid.
Starbucks (HK) Ltd owned a figurative CTM comprising the word “now” accompanied by simple graphic elements comprising of lines radiating from the word “now”. The mark was registered in various classes, including telecommunications under Class 38.
British Sky Broadcasting Group plc (Sky) announced on 21 March 2012 that it intended to launch an internet protocol television service under the name “NOW TV”. Starbucks claimed that Sky’s choice of name infringed its existing figurative mark under Article 9(1)(b) of the CTM Regulation 207/2009, as there was a likelihood of confusion on the part of the public between Starbucks’ CTM and Sky’s NOW TV sign.
Sky counterclaimed that Starbucks’ CTM was invalid under Article 7(1)(c) as it was descriptive. Additionally, or alternatively, Sky submitted that the CTM was invalid under Article 7(1)(b) of the CTM Regulation as it lacked distinctive character.
Mr Justice Arnold began by considering Starbucks’ CTM, concluding (unsurprisingly) that the word “now” was the dominant element. He assessed the descriptive nature of this word accordingly. In particular, Arnold J considered the Oxford English Dictionary definition of the word “now”, which is “positive connotations of immediacy”. He also considered usage of the word “now” in the broadcasting, media and telecommunications sectors. Sky was successful in showing that this word, in particular, is used typically and almost exclusively in the industry to denote an instant, immediate service. By way of evidence, Sky adduced several examples of nominative usage of the word “now” in such sectors to demonstrate the descriptive way in which the word was employed.
In conclusion, the Court considered the understanding of the average consumer of the word “now” when viewed in context. Arnold J determined that, rather than perceiving the word “now” as a brand name, the average consumer would be inclined to consider the word as descriptive of a service. Accordingly, the CTM was descriptive and, therefore, invalid. Arnold J went further and confirmed that the figurative elements of Starbucks’ CTM did not affect his conclusion. On the contrary, he found in the alternative, that should Starbucks’ CTM not be invalid under Article 7(1)(c), it would fail anyway for lack of distinctive character. He determined that the mark had only, in fact, succeeded in registration because it included figurative elements. These alone did not mask the fact that the mark was descriptive. He warned that trade mark registries “should be astute to the consequence of registering descriptive marks under the cover of a figurative fig leaf of distinctiveness”.
This decision says much about the English judiciary’s current approach to trade mark infringement proceedings. The message seems to be that what is distinctive shall be protected; in this case, simply adding nondescript lines around a word was not sufficient to claim a monopoly over the word itself. In this case, the CTM was found to be invalid, although had it not been, the monopoly it would have allowed Starbucks to claim would have been extremely narrow. As this is only a High Court ruling, it remains to be seen whether the decision will be appealed and, if so, whether Arnold J’s decision will be followed by the Court of Appeal.