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Brand reputation: Advertising is not enough to create goodwill

John Illsley discusses a pragmatic Supreme Court decision on what is a sufficient basis to maintain a legal action against passing off

2 June 2015

The UK Supreme Court has put the final nail in the coffin for Hong Kong-based firm PCCW Media Ltd in its battle to prevent British broadcaster Sky from using the name Now TV for its internet protocol television (IPTV) service.

Despite PCCW owning an IPTV service by the name of Now TV in Hong Kong, the numerous legal proceedings and appeals ruled in favour of Sky, both in terms of trade mark infringement where the trade mark was invalidated, and in terms of passing off. The judge rejected the most recent appeal, recognising that PCCW possessed no goodwill within the UK market and therefore Sky's Now TV service was in no way passing off PCCW's existing brand.

The key issue here was whether an entity needed only to establish a reputation within the UK, and did not need to create goodwill by establishing a business, to maintain legal action against passing off. While PPCM's Now TV c...

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