Deputy High Court Judge Michael Tappin KC has ruled that Google’s YouTube Shorts service does not infringe various SHORTSTV trade marks and that there is no passing off. With one exception, he also held that the trade mark registrations were valid – though they should be partly revoked for non-use.
The case concerned a total of five UK trade marks owned by Shorts International Limited (SIL). Four of these were filed in February 2018 and comprised stylised versions of the words SHORTS and TV, including the Play sign within the letter O – one of these is pictured.
The fifth mark was filed in September 2019 for the word SHORTSTV and was registered in respect of a large number of goods and services.
Google launched YouTube Shorts, which is devoted to videos less than 60 seconds long in portrait format, in the UK in June 2021. It is available on the internet and on YouTube apps. Google uses the brands YouTube Shorts, Shorts alone and various logos comprising the word Shorts.
Validity of the SHORTSTV trade marks
The judge found that one meaning of the word “shorts” was short-form audiovisual content, including (but not limited to) short films.
The word shorts would therefore be recognised by the average consumer as a description of a characteristic of the relevant goods. The average consumer would also recognise the Play symbol as designating a characteristic of the goods. But, said the judge:
“the way in which the two elements are combined is such that the mark does not consist ‘exclusively’ of indications which may serve to designate characteristics of those goods. The combination creates an overall impression which goes beyond a mere juxtaposition of two descriptive indications.”
That meant that these marks were not objectionable under section 3(1)(c) of the Trade Marks Act. For similar reasons, they did not fall foul of sections 3(1)(b) or (d). However, they were partly revoked for lack of genuine use for certain goods and services.
The outcome was different regarding the SHORTSTV word mark as the judge said it gave the impression “that the goods are shorts provided by televisual means and that the services involve the provision of shorts by televisual means”. It was invalidated for most of the goods and services specified.
None of the marks had acquired distinctive character through use, as only limited groups of people were exposed to the marks and a significant proportion of the general public in the UK had not come to identify goods and services as coming from a particular undertaking.
Alleged infringement and passing off by Google
Deputy Judge Tappin found no likelihood of confusion under section 10(2), even for Google’s use of a sign comprising the word Shorts and a play symbol without any other text (pictured).
This was partly because he found that the distinctive character of the 2018 marks was low, and arose from the combination of the word shorts and the Play symbol in the letter O whereas Google’s sign had a separate logo containing the Play symbol. He said:
“In my judgment the average consumer would appreciate that the similarity between the 615/649 Marks and this composite sign arose from the fact that the marks are registered for, and the sign is being used in relation to, goods and services for which the word ‘shorts’ and the play symbol indicate characteristics. Therefore, in my judgment the average consumer would not mistake the sign for the mark, nor would they believe that the goods and services denoted by the sign come from the same undertaking, or an economically linked undertaking, as that responsible for the goods and services denoted by the mark.”
There was only one example showing actual confusion and that person was not representative of an average consumer.
The section 10(3) infringement case also failed as the judge found that the marks did not have a reputation in the UK, except possibly among consumers of short films. Although he found Google’s signs would bring to mind SIL’s marks among such consumers, there would be no dilution of distinctive character or tarnishing.
Similarly, while SIL had protectable goodwill in the UK associated with its 2018 marks, there was no misrepresentation or damage to result in passing off.
What does this mean?
While the judgment contains many important points, an interesting finding was that (contrary to SIL’s submissions), by the relevant dates (2018-2021), the meaning of the word “shorts” had evolved beyond “short films” to include other short-form audiovisual content, such as short comedy videos, documentaries and dramas.
This finding demonstrates one of the many fascinating aspects of trade mark law: how language changes over time and how such changes can affect the way that words and logos are perceived by consumers. It is something that trade mark professionals must continually pay attention to!
To find out more about the issues raised in this blog contact Rosie Burbidge,