Warning for owners of trade marks with a figurative figleaf of distinctiveness
snIPpets – January 2013
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Patents / Competition
Mr Justice Arnold has recently ruled in the case of Starbucks (UK) Ltd v British Sky Broadcasting Group Plc  EWHC that a Community Trade Mark ("CTM") for NOW, which was descriptive and only registered because it included figurative elements, could not prevent the use of the sign NOW TV that didn't include anything similar to those figurative elements.
The Claimants ("PCCW") are a substantial Hong Kong-based broadcasting group who own a CTM for the word "now" in lowercase with six fines lines arranged in a star or sun shape emanating from the central letter "o".
The mark was registered for a number of services including, "telecommunication services", "television communication services", "television broadcasting services" and "telecommunication of information webpages" in class 38 (the "CTM").
The defendants ("Sky") announced their intention to launch an internet protocol TV service called NOW TV. PCCW brought a claim that Sky was infringing the CTM by its use of the sign "NOW TV", the sign "NOWTV.COM" and the following logo:
Sky applied to stay the infringement claim pending an application to invalid the CTM at OHIM. Earlier this year, Arnold J refused to stay the infringement proceedings pending the result of the OHIM invalidity action but instead ordered a speedy trial of the issues on the basis that Sky's launch would swamp PCCW's goodwill. The Court of Appeal subsequently confirmed this decision. The Supreme Court then refused to hear an appeal or refer any questions to the Court of Justice of Europe on the basis that the law was clear and the determination of whether there were "special reasons" for refusing a stay was one to be decided on the facts of a particular case.
The current case therefore concerned the substantive issues of whether the CTM was valid and infringed and whether there was a case in passing off.
Overall, Arnold J came to the conclusion that Sky hadn't infringed the CTM and, in any event, the CTM was invalid on the basis that it was descriptive or devoid of distinctive character. The dominant element of the CTM was the word "NOW", which would not be understood by the average consumer as a brand name but as a description of a characteristic of the service, namely the instant, immediate nature of the service. The judge noted that the word NOW has been widely used descriptively in this sector and is commonly used in electronic programme guides and online programme guides to identify the programme current showing. The figurative elements didn't change this opinion and, if they were taken into account, they would make the mark devoid of distinctive character.
In his view, PCCW only obtained registration of the CTM because of the inclusion of the figurative elements. However, PCCW were trying to enforce the CTM against signs that didn't include "anything like the figurative elements of the CTM". The only common element was the word NOW so, even if the mark were valid, there was no likelihood of confusion and no infringement. The passing off claims also failed for various reasons including lack of goodwill, neither name being strongly distinctive and the differences between the names and services.
Mr Justice Arnold also had some strong words to say about the drafting of witness statements by solicitors. PCCW's principal witness made several statements during the course of the proceedings some of which contained information that, as she readily acknowledged during cross-examination, was not within her own knowledge. However, her statements did not make this clear and did not state the source of the information. Arnold J did not blame the witness herself, rather her solicitors, but noted that it was "a slipshod approach" to evidence, which breached the procedural code and caused unnecessary difficulties for the witness when cross-examined.
The case shows that, whilst many companies add some figurative elements to descriptive marks in order to obtain registration, the English Courts will not enforce such registrations against other descriptive marks if they do not include similar figurative elements. As well as being critical of PCCW's attempt to do this, Justice Arnold also warned trade mark registries of the consequences of registering descriptive marks with a "figurative figleaf of distinctiveness". In his view, marks like these should be refused registration in the first place.
The case also shows that, in the right circumstances, the English court will decide a trade mark claim quickly and decisively, rather than having to wait for OHIM to determine the validity of the trade mark registration. In different circumstances, however, without the same level of urgency, an infringement claim concerning the same NOW TV launch has been stayed pending the OHIM determination (EMI v British Sky Broadcasting Group  EWHC 1644).