From: Neil Foster <>
Date: 19/05/2015 01:07:56 UTC
Subject: ODG: Passing off in the UKSC- Starbucks v BSB

Dear Colleagues;
I suspect many who teach torts elect, as I do these days, to not cover the tort of passing off, as it is usually dealt with in IP courses. But since it is indeed a tort action I thought it was worth noting the recent decision of the UK Supreme Court in Starbucks (HK) Ltd & Anor v British Sky Broadcasting Group PLC & Ors [2015] UKSC 31 (13 May 2015) . 
Here a Hong Kong provider of TV online under the brand “Now” (the connection with the famous coffee retailer Starbucks is not apparent, but must be there somewhere), is suing BSkyB in the UK, which proposed to also start an online TV service using “Now” as part of the name. The claim failed because the Hong Kong firm was held not to have relevant “customers” in the UK, despite having a more than de minimis “reputation” due to Chinese speakers who watched its shows on Youtube and in other ways over the internet. But those in the UK who were doing this were not paying for the privilege, and hence they did not contribute to the “goodwill” in a commercial sense.
Lord Neuberger (delivering the unanimous judgement for the Court) at [42] acknowledges that this issue was decided the other way in the Australian decision of the Full Court of the Federal Court in Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159;  (1992) 33 FCR 302 , where reputation alone was held sufficient, without having to go further and prove that, as at the relevant time, that reputation had generated any income. But his Lordship disagrees, and notes that the High Court of Australia has not considered the issue.
He is correct about that point, although perhaps it is worth noting that Conagra has been cited in at least 2 High Court decisions for other points without the slightest indication of any doubt as to its correctness: see JT International SA v Commonwealth of Australia [2012] HCA 43 (5 October 2012) and Commissioner of Taxation (Cth) v Murry [1998] HCA 42; 193 CLR 605; 155 ALR 67; 72 ALJR 1065 (16 June 1998). And in the Australian context it was a strong IP court: the bench involved Gummow J, usually regarded as one of Australia’s most accomplished IP judges, and later on the High Court, and French J, also no slouch in this area and currently Chief Justice of the current High Court. So it will be interesting to see how the Supreme Court’s decision here is received in Australia.

neil foster 
Associate Professor
Newcastle Law School
Faculty of Business and Law

T: +61 2 49217430

Further details:
My publications: , 

MC177 (McMullin Building)
The University of Newcastle (UON)
University Drive
Callaghan NSW 2308

CRICOS Provider 00109J

Website Blog Facebook Twitter YouTube