Why overseas brands need to be registered in the UK

Friday, 22nd May 2015

A recent case, heard before the highest court in the UK, has demonstrated why overseas brand owners need register their brands in the UK.

In Starbucks (HK) Limited and Anor v British Sky Broadcasting Group PLC and Ors [2013] EWCA Civ 1465, the UK Supreme Court was asked to consider whether a brand owner can bring a claim in passing off, in circumstances where they do not have a business with customers within the jurisdiction but only have a reputation amongst a significant section of the public within the jurisdiction.

The facts were as follows: The Claimants operated an online Internet Protocol TV service in Hong Kong under the brand name "NOW TV". By 2012 it had become the largest pay TV operator in Hong Kong. People in the UK could not receive the service in the UK and there were no subscribers with a UK billing address. However, a number of Chinese speaking residents in the UK were aware of the service through exposure to it when residing in or visiting Hong Kong. UK residents could also access the Chinese language content via the Claimants' website, on the YouTube website and a few of the programmes from the NOW TV service were available as videos-on-demand on various international airlines, three of which flew into the UK.

The Defendants launched their own online NOW TV branded service in the UK. The Claimants objected to this and, inter alia, sued the Defendants for passing off (i.e. for passing off their TV service as that of the Claimants). The claim was dismissed at first instance and on appeal to the Court of Appeal. The case was then appealed to the UK Supreme Court.

Unsurprisingly, the Supreme Court held that it is not enough for a Claimant to establish that it has a ''reputation'' amongst a significant number of people in this country. A Claimant must establish ''goodwill'', in the form of actual customers or clients for its goods or services within the jurisdiction. Further, where the Claimant's business is abroad, people who are in the UK, but who are not customers of the Claimant in the UK, will not do, even if they are customers of the Claimant when they go abroad. The fact that a Claimant has obtained a ''reputation'' for its mark in the UK, in respect of his products or services outside the UK, will not suffice. He must have customers and trading goodwill in the UK.

The result of the case underlines once again the importance of overseas brand owners (that don't currently trade in the UK, but plan to do so sometime in the next 5 years) registering their trade marks in this jurisdiction, if they want to be able to prevent others using the same or a similar brand in trade.        

Key Contact

Carl Steele

Partner

[javascript protected email address]
+44 (0)1392 333997


Get in touch

Please complete the form and we will get back to you as soon as possible.

Thank you for your enquiry. One of our team members will be in contact with you shortly.

Related Expertise

Intellectual Property