IP and IT Law Bytes: Trade marks: invalidity

27 August 2014

Audrey Horton

The High Court has held that using “youview” for a television programming service infringed a registered trade mark for YOUR VIEW, and rejected a counterclaim for invalidity.

Background

The Trade Marks Act 1994 (TMA) provides that a trade mark owner may prevent unauthorised third parties from using in the course of trade any sign where, because of its identity with or similarity to the trade mark, and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public.

A trade mark cannot be registered if it (among other things) is devoid of distinctive character, is descriptive, or where the application was made in bad faith (section 3, TMA). A trade mark may be declared invalid on the basis that it should not have been accepted for registration (section 47(1), TMA).

In Chartered Institute of Patent Attorneys v Registrar of Trade Marks (known as IP Translator), the European Court of Justice (ECJ) held, among other things, that the goods and services included in a trade mark application must be listed precisely and clearly enough to enable authorities and traders to determine, on the sole basis of that list, the scope of the trade mark rights (www.practicallaw.com/4-520-4882).

Facts

T developed plans to use YOUR VIEW as a brand in early 2007, and marketed an online platform under the YOUR VIEW brand from late 2009. In 2009, T applied for a registered trade mark for YOUR VIEW for goods and services in classes 9, 35 and 38.

Y offered a television programming service through set top boxes under the mark “youview”. Y applied for a trade mark registration for “youview” in stylised form, but T opposed it. The Intellectual Property Office upheld the opposition in part, and this was upheld by the High Court on appeal.

Y continued to offer set top boxes under the “youview” mark. T started trade mark infringement proceedings in the High Court.

Decision

The court found that Y had infringed T’s trade mark registration for YOUR VIEW. There was similarity between the marks, and similarity and/or identity between the relevant goods and services. The court found that there was a likelihood of confusion between the marks. This was, in particular, in light of the convergence between the television and telecommunications markets, and the fact that Y’s set top boxes were often bundled with telecommunications services.

Regarding the validity of T’s mark, Y had sought to argue that the specification of T’s mark was not identified with sufficient clarity or precision. The court considered that IP Translator could be applied to invalidate registered trade marks whose specification did not meet that standard, but this was not the case here.

The court also rejected Y’s submissions that T’s trade mark was non-distinctive and non-descriptive, and applied for in bad faith. There was no evidence that T knew that Y might be planning to use the “youview” mark when T applied for its trade mark in late 2009.

Comment

This decision is particularly interesting as it provides some guidance on the application of the ECJ’s ruling in IP Translator. In particular, the court found (obiter) that, theoretically, an attack on a trade mark’s specification can be made on the basis of the ruling in IP Translator not only in the application stage, but also after registration in a claim for a declaration of invalidity.

Case: Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch).

First published in the August 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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