"Lift the figurative figleaf of distinctiveness", but not just NOW

Starbucks' Community
trade mark

This morning Mr Justice Arnold gave judgment in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch). This was one of a pair of trade mark infringement and passing off actions brought by proprietors of unused Community trade marks featuring the word "now" to block the launch of Sky's NOW TV channel. In each of this pair of cases, which came before different judges, the claimant sought injunctive relief and Sky sought a stay of infringement proceedings pending the outcome of invalidity proceedings which had been commenced before the Office for Harmonisation in the Internal Market (OHIM) in Alicante.

In EMI (IP) Ltd and others v British Sky Broadcasting Group plc and another [2012] EWHC 1644 (Ch), noted here by the IPKat, John Baldwin QC ordered a stay of the infringement claim after weighing up the likely damage to Sky if it were not ordered, while in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch), noted here on the IPKat's weblog by guest blogger Kingsley Egbuonu, Arnold J refused a stay but ordered a speedy trial. The Community trade mark of the claimants (referred to, collectively, as PCCW, though Starbucks was the first-named) is illustrated above, right, while Sky's allegedly infringing mark is above, left. The mark was registered for, among other things, ""telecommunication services; … telecommunication of information (web pages), computer programs and data; … radio and television communication services; … television broadcasting services; broadcasting and transmission of radio and television programmes; cable television broadcasting; … transmission of music, films, interactive programmes, videos, electronic computer games" (Class 38).

Since the case has only just come online and the weekend is pressing, this will be only a short, holding post, which may be followed by a further and more analytical one once this Kat has had the chance to digest nearly 160 paragraphs of the hard stuff.  So, to cut to the chase, the bottom line] is as follows (to quote the judge)at [159]:

"(i) The CTM is invalid under Article 7(1)(c), alternatively Article 7(1)(b), of the CTM Regulation.

(ii) Even if the CTM is valid, Sky have not infringed it.

(iii) If the CTM were valid and Sky's use was within Article 9(1)(b) of the CTM Regulation, Sky would not have a defence under Article 12(b).

(iv) PCCW's claims for passing off fail".

As to whether Starbucks' Community trade mark was validly registered, the learned judge conducted a lengthy and detailed review both of the law and of the mark, concluding as follows (at [115] to [117]

"115. As counsel were agreed, context is everything. Counsel for PCCW's core submission was that, viewed in context, NOW would be perceived by the average consumer as a brand name, rather than as a description of any characteristic of the services in question, even if it was understood to allude to such a characteristic. He cited as a good example some of Sky's advertisements, which feature the question "What's on NOW TV tonight?". He submitted, and I accept, that it was clear that Sky expected the reader to understand that NOW TV was the name of its new internet television service and that the reader would get the message. He further submitted this showed that NOW was inherently distinctive for a television service. I do not accept this. All the example shows is that the combination of NOW and TV viewed in the context of an advertisement which is carefully designed to convey the message that NOW TV is the name of a new service provided by Sky has some distinctive character. By way of counter-example, the question "What's on NOW?" posed in relation to a television service without such supporting context would not convey the same message [Merpel thinks this is a good point].

116. Taking all of the evidence into account, I conclude that the CTM is precluded from registration by Article 7(1)(c) in relation to the services in issue because NOW would be understood by the average consumer as a description of a characteristic of the service, namely the instant, immediate nature of the service. The figurative elements of the CTM do not affect this conclusion. In the alternative, if the inclusion of the figurative elements means that the CTM does not consist exclusively of the unregistrable word NOW, I consider that the CTM is devoid of distinctive character and thus unregistrable by virtue of Article 7(1)(b).

Figleaf? What figleaf!

117. I would comment that it appears to me that PCCW only succeeded in obtaining registration of the CTM because it included figurative elements. Yet PCCW is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place".

Paragraph 117 segues neatly into the issue of infringement, which there wasn't, and infringement leads to the question whether Sky would have been entitled to rely on the "nominative use" defence under Article 12(b) of the Community Trade Mark Regulation, which it wouldn't.

The IPKat is thrilled with the Doctrine of the Figurative Figleaf, which may yet turn out to be the most significant British contribution to a European trade mark jurisprudence.  But what will be its future? Will it be raised in court if it might be overturned on appeal?

Merpel notes that Mr Justice Arnold makes reference to Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 (Ch), Hormel Foods Corp v Antilles Landscape Investments NV [2005] EWHC 13 (Ch) and Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch) and DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat).  What, she innocently wonders, do these cases all have in common?