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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 sufficient degree of clarity and precision in a trade mark application.
The court accepted the CJEU's ruling may well extend beyond trade mark registration issues to a case where a party seeks invalidity. Lack of clarity and precision in the specification is likewise a ground of invalidity. However, on the facts of this case, the judge ruled that Total's application did not lack clarity. The judge commented:
'It is to be expected (indeed it is practically inevitable) that most if not all specifications of goods and services will have some element of uncertainty at their margins since one is using concepts expressed in short words or formulations to apply to fields of often complex and variable activities.'
The judge further commented that much interpretation of the specification is likely to depend on the commercial context in which a particular term is used. This view emphasises the difficulty in creating a trade mark specification that has a completely clear meaning to all registries and third parties viewing the registration without any specialist knowledge of the related market sector.
The court dealt with YV's other invalidity arguments more briefly, namely: Total's trade mark is devoid of distinctive character and/or descriptive and Total's trade mark application was made in bad faith. The court surmised that YOURVIEW could be descriptive if it was used in relation to a person's view but for the goods and services in question, it was a distinctive mark. On the other ground, that the application was made in bad faith, the court was satisfied with the claimant' s evidence that demonstrated they had no knowledge of YV's business plans when they applied for their trade mark in 2009.
What did the court say about infringement?
As to a finding of infringement, there was much debate around the issue of similarity/identity between goods and services covered by Total's mark and the goods and services marketed by YV. YV sought to make a distinction, submitting that it supplies goods in the form of set-top boxes rather than the type of services supplied by Total. However, the court construed this issue more broadly citing survey evidence demonstrating that consumers perceive services provided under the YOUVIEW mark as on-demand TV services. The court concluded that both parties' form of supply makes use of digital databases, telecommunications and computer programmes giving access to such databases.
On the issue of similarity between the marks YOURVIEW and YOUVIEW, the court was easily satisfied, finding a high degree of oral and conceptual similarity between the two marks.
In addition to addressing the issue of similarity/identity of goods and services covered by the mark, as well as similarity between the marks themselves, the court explored the issue of likelihood of confusion. In deciding that there was a likelihood of confusion between the marks, the court considered the fact that there is convergence in the broadcasting and telecommunications markets. There was evidence that YV's set-top boxes are often supplied as part of a bundle including telecommunications services—as such the services provided by each party were complementary and liable to confusion.
What can lawyers and brand owners learn from this judgment?
The outcome of this case is not surprising given the close similarity between the marks and the similar fields in which the parties operate. YV's attempts to buy time by a reference to the CJEU failed and now it faces the prospect of a costly rebrand. While sometimes the risk of infringement associated with using a certain mark might be worth it commercially, this kind of dispute can usually be avoided.
Carry out trade mark clearance searches
This case underlines the importance of carrying out checks early on to see if a new brand is likely to come into conflict with earlier registered rights. Use a trade mark attorney to carry out trade mark clearance searches in the relevant markets (including prospective export markets). These types of searches are usually quick and economical. The next stage can be more complex—analysing likely risks based on the register.
Register trade marks early on
In this case, it appears that YV applied for a trade mark after it had been using the YOUVIEW brand for some time. There are many such cases where a marketing department has signed off a new brand name, even begun to invest heavily in a marketing campaign and then embarked upon trade mark registration only to find this impossible because of a pre-existing registration. In this type of situation a company faces a difficult decision—either continue to use the brand name and hope the prior registrant doesn't bring infringement proceedings/is willing to settle, or avoid future risks by rebranding altogether. Neither situation is good and both potentially involve a lot of extra costs. The lesson is to register trade marks as early as possible. The registration costs of a trade mark that is perhaps never used, pale in comparison to the costs of using a mark that infringes someone else's rights.
Think carefully about trade mark specifications
Although Total's trade mark specification met the requisite standards of precision and clarity, this case serves as a useful reminder of the principles set out in the IP Translator case—relying on certain Nice headings alone or generally using vague terms in a specification runs the risk of a failed trade mark application. This case makes it clear that this principle is likely to apply to an assessment of a trade mark in an invalidity hearing (even one that predates the CJEU's preliminary ruling in IP Translator). For further guidance, see the IPO's Practice Amendment Note PAN 03/13.
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