If you have had difficulty securing trade mark registration, think carefully about your use in order to avoid infringement action

Background

In 2010 YouView TV Ltd ("YV") applied to register YOUVIEW (stylised) in the UK for a broad range of products including, "data recordings including audio, video, still and moving images and text in compressed and uncompressed form" (class 9), "broadcasting; communications; transmission, broadcast and reception and other dissemination of audio, video, still and moving images, text and data whether in compressed or uncompressed form and whether in real or delayed time" (class 38) and "design and development of computer hardware and software" (class 42). YV intended using their mark for a free TV programming and play-back service, which is an evolution of the existing "Freeview" service through a set top box.

YV's mark was successfully opposed in part by Total Ltd ("Total") who have an earlier mark YOUR VIEW for "database programs and databases" (class 9), "provision of commercial business information by means of computer databases; computerised database management; compilation of information into a database" (class 35), and "providing access to computer databases; telecommunication services" (class 38).

Despite the partially successful opposition, YV continued to use their mark for supplying television programs through their YOUVIEW set top boxes. YV also promoted YOUVIEW extensively in the UK which prompted Total to bring an infringement claim against YV. 

YV counterclaimed challenging the validity of YOUR VIEW claiming that (1) the goods and services lacked clarity and precision, and (2) YOUR VIEW was descriptive of one's personal view or perspective, and (3) the mark was filed in bad faith, and without legitimate business interests.

Assessment of the invalidity claim

In its invalidity action, YV relied on the IP Translator case, alleging that the specification of "databases" in classes 9 and 35, and "telecommunications" in class 38 were not identified with sufficient clarity or precision. YV argued that this would lead to excessive uncertainty around the goods and services covered by the YOUR VIEW registration.

The judge in this case (Sales J) was of the opinion that a lack of clarity and precision in the specification could equally be a ground of invalidity as well as a ground for refusal at the application, but ultimately did not think it necessary to refer this question to the CJEU as, on the facts of the case, there was no material lack of clarity or precision in the specification of the goods/services covered by the YOUR VIEW mark. Whilst there may be, in the words of the court "some element of uncertainty at the margins" about whether something is a computer database, a database programme or a telecommunication service, there is "no significant doubt about the core meaning of those terms and no unacceptable uncertainty regarding their scope of application". The court went on to state that "it is difficult to think of alternative, more precise and acceptable terms or formulations which would fulfil the legitimate objects of a person in the position of Total seeking to register a trade mark in accordance with the Directive."

In the judgment, a database is referred to as "an organised collection of information treated as a unit", whilst a telecommunication service has a broad meaning which includes digital audio and visual streaming via broadband connections, whether mobile or fixed, and will therefore include set top boxes. 

As such, the specifications in YOUR VIEW were clear and identical to the goods/services registered and used by YV. It does however, not rule out the potential that a competitor may claim invalidity against the clarity of specification after registration.

This case also gave practical application of the recent IP Translatordecision, which prompted a change in the approach to trademark classification. This case now suggests that once registered the goods and services listed should be given their natural and every day practical meaning. The Court decided that as a result of the convergence of technologies, services such as broadcasting are identical to "telecommunication services" because the average consumer's perception of the differences between these services are likely to be blurred. 

Based on this approach, the invalidity claim was dismissed on the first ground. The Court also went on to dismiss grounds (2) and (3), holding that the mark was sufficiently distinctive to merit registration and there was no evidence of bad faith. There was nothing to suggest that Total filed their YOUR VIEW mark to oppress or block YV's business plans, or that they had any knowledge of YV's intended brand name.

Assessment of infringement

In its assessment, the Court once again took a practical approach and looked at the actual use of the YOUVIEW mark on television box sets against the goods and services in the YOUVIEW registration.

The Court held that the goods and services were identical, or at least highly similar. The nature of TV and telecommunications market is to offer goods as a converged bundle, so the supply of relevant goods and services are complementary and integrated. In view of the close similarities between the marks there existed a likelihood that the average consumer would be confused as to the origin of the goods and services being offered to them.

As a result, use of YOUVIEW was held to infringe YOUR VIEW.

The take away message from this case is that, if you have difficulties securing registration for your proposed mark, you should think carefully about whether you continue to use your mark for those contested goods or services as you could ultimately face the prospect of having to rebrand. This also runs true if you decide to use without a registration. If you do continue to use your mark you could face an infringement action being brought against you.

Also, when assessing earlier marks on the register although the goods and services may be described broadly these should be assessed in the context of the commercial market, taking into account the natural meaning of the words and any convergence of technology or developments in the trade.

The full judgment can be accessed here

Case Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch), 16 June 2014