Call us today0800 160 1298
 
 

Advantage Litigation

Welcome to Advantage Litigation Services. We provide affordable access to commercial litigation.

  • Home
    Home This is where you can find all the blog posts throughout the site.
  • Categories
    Categories Displays a list of categories from this blog.
  • Tags
    Tags Displays a list of tags that have been used in the blog.
  • Bloggers
    Bloggers Search for your favorite blogger from this site.
  • Team Blogs
    Team Blogs Find your favorite team blogs here.
  • Login
    Login Login form

UK Supreme Court Clarifies 'Passing Off' Law

Posted by on in Commercial Litigation
  • Font size: Larger Smaller
  • Hits: 3714
  • Subscribe to this entry
  • Print

The highest UK court – namely the UK Supreme Court – has reaffirmed the territorial nature of 'goodwill' in relation to 'passing off ' actions.

A Passing off action is a common law method of intellectual property enforcement that can be used to prevent the unauthorised use of a mark, which is similar to another's registered or unregistered trademark.

Starbucks and PCCW, who provide internet TV services in Hong Kong under the name NOW TV, were unhappy when SKY announced a plan to launch their own internet TV service of the same name.

Accordingly, SKY were sued for trademark infringement and passing off. Both actions were dismissed at first instance and on appeal, but the matter was allowed before the Supreme Court.

Said Court held that it simply wasn't enough for, Starbucks / PCCW to demonstrate that internet TV service had a reputation with a significant section of the UK public. Instead, to be successful in a claim for 'passing off', the pursuers would've had to show they had actual UK-based customers.

Delivering the Court's decision, Lord Neuberger said:

"If it was enough for a claimant merely to establish reputation within the jurisdiction to maintain a passing off action, it appears to me that it would tip the balance too much in favour of protection," he said. "It would mean that, without having any business or any consumers for its product or service in this jurisdiction, a claimant could prevent another person using a mark, such as an ordinary English word, 'now' for a potentially indefinite period in relation to a similar product or service..."

He continued:

"In my view, a claimant who has simply obtained a reputation for its mark in this jurisdiction in respect of his products or services outside this jurisdiction has not done enough to justify granting him an effective monopoly in respect of that mark within the jurisdiction. I am unpersuaded that PCCM's case is strengthened by the fact that we are now in the age of easy worldwide travel and global electronic communication..."

The decision makes it clear how important 'territory' can be when enforcing intellectual property rights in the UK.

Contact us - Help Protecting Trade Marks in the UK

Although intellectual property litigation is conducted in specialist courts across the UK and Europe, enforcing an intellectual property right or defending an action for IP infringement doesn't need to be prohibitively expensive. To see how we can help you, click here to contact us today or call 0800 160 1298.

Get in touch

  1. Your Name(*)
    Please let us know your name.
  2. Your Email(*)
    Please let us know your email address.
  3. Company Name(*)
    Please write a subject for your message.
  4. Your Phone Number
    Invalid Input
  5. Message(*)
    Please let us know your message.
  6. Anti-Spam, please enter the characters shown
    Anti-Spam, please enter the characters shown
    Invalid Input

Latest News

  • Following recent Supreme Court rulings in two professional negligence cases, the Court has outlined a “wholly new legal roadmap” for professional negligence claims made in England and Wales. As a result, the Professional Negligence Lawyers Association (PNLA) have said that existing claims will now need to be reviewed, stating that “for many there could be a substantial impact on the likely chances of success and the assessment of financial loss”.The cases in question are Khan v Meadows [2021] and Manchester Building Society v Grant Thornton UK LLP [2021]. The first case centred on whether a medical expert, who failed to diagnose that a mother carried the haemophilia gene, was liable for the costs associated with her son’s autism as well as his haemophilia, whilst the second case concerned whether accountants Grant Thornton were liable for the costs of a building society... Read More

  • A recently failed business claim that was dismissed at court has once again highlighted the many pitfalls and legal complexities facing litigants in person (LIPs – that is, individuals taking legal action without professional representation from a solicitor or barrister). The claim in question - Daly & Anr v Ryan & Anr. 2021 - concerned an individual businessman who had a costly judgment entered against him simply because he had repeatedly failed to abide by the rules. Read More

  • Latest statistics from the Solicitors Regulation Authority (SRA), who are responsible for the regulation of solicitors and law firms in England and Wales, confirm what many in the profession have been predicting for a while; that law firms are accelerating the consolidation process as they begin to embrace new ways of working. Read More