Court of Appeal upholds Google’s win in “shorts” trade mark dispute

Summary

The Court of Appeal has upheld the High Court’s decision that Google’s use of the term “shorts” in relation to its short-form videos on its YouTube service did not infringe Short International Limited’s (“SIL”) trade marks, nor did it amount to passing off. At trial, SIL relied on its word mark for “SHORTSTV”, and the four figurative marks depicted below: 

The High Court judge had been entitled to reach their conclusions on the evidence and the Court of Appeal emphasised that the assessment of likelihood of confusion is a global one. Judges are entitled to approach that assessment in different ways, rather than by applying legal sub-tests with rigid methodology, which would risk overcomplicating an already complex area of trade mark law. 

More broadly, the decision reaffirmed that trade marks with low distinctive character benefit from a narrower scope of protection, unless acquired distinctiveness at the relevant date can be evidenced. The court in its infringement analysis will discount descriptive / common elements and focus on distinctive components only.

High Court

Our previous article, here, reports on the High Court decision. In summary, the initial case concerned Google’s YouTube Shorts service, launched in 2021, which is dedicated to user-generated videos of less than 60 seconds in vertical format. At trial, the judge held: (1) SIL’s figurative trade marks were valid but had low distinctive character; (2) the SHORTSTV word mark was partially invalidated for most goods and services; and (3) Google’s use of “shorts” did not infringe, nor did it amount to passing off. 

The Court of Appeal

Despite SIL appealing the High Court’s decision on 12 separate grounds, their appeal was dismissed in full.

One of central issues on appeal was the meaning of the word “shorts”. SIL argued that the relevant average consumer would understand “shorts” to mean short films. The Court of Appeal rejected this and upheld the High Court’s finding that, at the relevant time, the meaning of “shorts” extended beyond short films and included other short-form audiovisual content. The Court of Appeal also upheld the conclusion that certain uses of “shorts” by Google were purely descriptive rather than used in a trade mark sense. 

The Court of Appeal agreed that the similarities were in the descriptive elements only, rather than in the aspects that gave SIL’s marks their (limited) distinctive character. “Shorts” and the play symbol were themselves not distinctive. What gave the figurative marks their distinctive character (albeit a low level) was the overall impression of the mark as a whole comprising of the combination of the word with the play symbol in red, placed within the “O” of short (as depicted above), which was absent from the Google signs. Consequently, the judge was entitled to conclude that there was no likelihood of confusion. 

It also upheld the finding that SIL’s trade marks had no reputation in the UK, with the judge describing the evidence on reputation at the relevant date as “paper thin”. This highlights the importance of keeping records and documentation (e.g. sales figures, user numbers, marketing spend, press coverage and consumer engagement data) so that reputation can be evidenced should enforcement become necessary. 

On invalidity, the Court of Appeal upheld the finding that the SHORTSTV word mark was partially invalid in relation to most of the goods and services. It agreed that “shorts” would be understood descriptively, that “TV” would be understood to mean television, such that SHORTSTV did not create an impression sufficiently far removed from the simple combination of those elements. It also upheld the rejection of the proposed amendment to add the words “save for short films”, holding that “short films” was not a sufficiently clear limitation and, in any event, did not go far enough. This finding reinforces the risk that descriptive word marks may be vulnerable to challenge on the scope of their registration, as well as only having a narrow scope of protection.

This article was co-authored by Abigail Cropper and Holly Webb. For more information or if you have any questions, please contact Emily Roberts, Holly Webb or your usual IP team contact.

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