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Following a third defeat concering its YOUVIEW trade mark, has YouView TV finally learnt its lesson? The recent ruling from the Intellectual Property Enterprise Court highlights the risks of using a trade mark with securing a registration first.
Total Ltd v YouView TV Ltd  EWHC 1963 (Ch),  All ER (D) 122 (Jun)
What is the background to this dispute?
This dispute dates back to 2010 when YouView TV Ltd (YV), a set-top box venture backed by BT and TalkTalk, applied for a UK trade mark for YOUVIEW. Total Ltd (Total), a telecoms provider, challenged the application on the basis of its earlier registration for YOURVIEW registered in class 9 (database programs and databases), class 35 (provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database) and class 38 (providing access to computer databases; telecommunication services). After Total's opposition succeeded in the UK Intellectual Property Office, YV brought an unsuccessful appeal to the Intellectual Property Enterprise Court YouView TV Ltd v Total Ltd  EWHC 3158 (Ch).
Despite the defeat of its trade mark application, YV continued to market its services under the YOUVIEW mark and invested millions in its advertising campaign. Subsequently, Total issued a trade mark infringement claim against YV, while YV counterclaimed that Total's trade mark registration was invalid and should be removed from the register.
How did the court deal with YV's invalidity arguments?
YV raised several arguments in its invalidity counterclaim. The most interesting was its claim that the specification of Total's trade mark was not identified with sufficient clarity and precision, particularly in relation to the specification of 'databases' in class 9 and class 35 and also in relation to the specification 'telecommunications services' in class 38. This was pleaded with reference to the IP Translator case (Chartered Institute of Patent Attorneys v Registrar of Trade MarksCase C-370/10,  IP& T 650), in which the Court of Justice of the European Union (CJEU) ruled that specification of goods and services using Nice class headings alone may not be enough to ensure a sufficien
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