Youview TV Ltd v Total Ltd

Trade mark specifications should be given their ordinary and natural meaning. They should not be construed unnaturally narrowly, but neither should broad terms be given an unlimited construction that makes their boundaries uncertain. Similarity of goods and services requires consideration of all relevant factors, including nature, purpose, use, competition, complementarity and channels of trade. Telecommunications services may, absent a clear contrary indication, encompass converging forms of communication, including broadcasting. The likelihood of confusion is a global assessment through the eyes of the average consumer. An appellate court should be slow to interfere with an experienced hearing officer’s multifactorial assessment absent an error of principle.

YouView TV Limited appealed against a decision of the Registrar of Trade Marks, given by the hearing officer on 30 May 2012. The hearing officer had upheld in part Total Limited’s opposition to an application for a series of marks including youview.

The appeal concerned class 9 goods, principally apparatus for television and radio reception and a proposed amended specification for software for embedding in such apparatus. Total relied on its earlier mark YOUR VIEW and section 5(2)(b) of the Trade Marks Act 1994. The central issues were the proper construction of Total’s specifications, whether the amended specification should be considered for the first time on appeal, and whether the hearing officer had erred in assessing similarity and likelihood of confusion.

1. The appeal was dismissed.

2. The amended description of software for embedding in apparatus for television and radio reception could properly be considered on appeal. The relevant question was whether doing so would be unfair to the respondent by raising issues requiring further evidence. The respondent’s illustrative technical material was admitted without objection, and the court was not persuaded that consideration of the amendment would cause unfairness.

3. Specifications must be construed according to the ordinary and natural meaning of their language, viewed in the context of trade. They should not be given an unnaturally narrow meaning merely to exclude goods which the words naturally cover. Database software does not lose its character as database software because it is sold for incorporation into a more complex software arrangement. The proposed specification therefore covered database software for inclusion in television or radio receivers, producing identity or substantial similarity with the earlier specification.

4. There was no sufficient basis for restricting “telecommunications services” to telephony and broadband. The term could, on its face, include several converging areas of communication, including broadcasting. In any event, even on the narrower construction advanced by the appellant, apparatus for receiving telecommunications services was closely similar to apparatus for television and radio reception. The goods and services were therefore highly similar.

5. The hearing officer had applied the correct global approach under section 5(2)(b). The marks had to be assessed visually, aurally and conceptually, by reference to their overall impressions and the perception of the average consumer. The hearing officer was entitled to regard YOUR VIEW and YOUVIEW as highly similar and to conclude that the stylisation and missing letter did not prevent confusion.

6. The assessment was multifactorial and particularly suited to the hearing officer’s expertise. The appeal disclosed no error of principle in either her legal approach or its application.

• High Court (Chancery Division): Floyd J dismissed the appeal from the hearing officer’s decision dated 30 May 2012.