Starbucks (HK) Case Note: The Ambiguous Limb of Goodwill and the Tort of Passing Off

This paper looks at the UK Supreme Court’s decision in the case of the Starbucks (HK) Limited v British Sky Broadcasting Group PLC (Starbucks). In this case Lord Neuberger re-affirmed that the traditional ‘hard-line approach’ is the applicable test for the goodwill limb under the tort of passing off in the UK. This approach maintains that in order to succeed in a claim for passing off, the claimant must show they have goodwill in the form of business and customers in the jurisdiction. Mere reputation among a significant section of the public within the jurisdiction (the soft-line approach) was held to be insufficient. Lord Neuberger’s reasoning in favour of the traditional ‘hard-line approach’ is critically analysed and it is found that his approach was out of touch with modern commercial reality. In conclusion, it is contended that Lord Neuberger did not strike the appropriate balance between the competing public interests in protection and competition and that he should have adopted the more factually inquisitive soft-line approach. This would have brought the UK into line with the more dominant and arguably more justifiable trend in other common law jurisdictions, thereby avoiding the enduring uncertainty which is likely to follow this decision.