UK Supreme Court confirms mere reputation not enough to found passing off action

On 13 May 2015, the UK Supreme Court delivered its judgment in Starbucks (HK) Ltd v British Sky Broadcasting Group PLC ([2015] UKSC 31) in which it has held that it is necessary for a claimant alleging passing off in the UK to have actual goodwill, in the sense of a customer base, in the UK before it will be able to succeed in passing off.

In doing so, the Court has made it clear that where a claimant's business is abroad, people who are in the jurisdiction, but who are not customers of the claimant in the jurisdiction, will not do, even if they are customers of the claimant when they go abroad.

The Court considered that if it was enough for a claimant to merely establish reputation in the UK, without there being a significant number of people who are customers within the jurisdiction, this would tip the balance between the public interest in free competition and the protection of a trader against unfair competition which passing off inherently involves too much in favour of protection, particularly in this modern era of global electronic communications.

A copy of the judgment can be found here on the UK Supreme Court website.