Total Ltd v YouView TV Ltd

A registered trade mark specification is not invalid merely because its boundaries have some uncertainty at the margins. The question is whether it creates an unacceptable or unreasonable uncertainty about the scope of protection. The ordinary and natural meaning, and the core of the specified terms, should be considered in their commercial context.

A proprietor need not have a positive intention to use the mark across every activity within a specification, provided the application relates to a legitimate commercial interest. Infringement under section 10(2) requires comparison of the actual use with the registered goods or services, the sign, and the overall context. Similar marks used for identical or closely similar goods and services may create a likelihood of confusion, particularly in converging markets.

Total owned the registered Your View trade mark for database-related goods and services and telecommunications services. YouView used the similar youview sign for a television and on-demand programming service supplied through set-top boxes.

YouView counterclaimed for invalidity on grounds including insufficient clarity or precision, lack of distinctive character, descriptiveness and bad faith. Total alleged infringement under section 10(2) of the Trade Marks Act 1994. The court also considered whether a reference to the CJEU was required.

1. Validity of the specification. The reasoning in Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator) was capable of applying to a later invalidity challenge, although the issue was not acte clair. A reference was unnecessary because the court could decide the factual application of the clarity standard.
2. A specification is sufficiently clear where its core and ordinary meaning can be identified and it does not create an unacceptable or unreasonable uncertainty about the scope of protection. Some uncertainty at the margins is inherent in legal concepts and is tolerable. The terms databases, database programs and telecommunications services satisfied that standard.
3. Distinctiveness and bad faith. The mark was not devoid of distinctive character or exclusively descriptive. The phrase Your View, in context, indicated the origin of an interactive telecommunications service. Bad faith did not require a positive intention to use the mark throughout the whole specification. Total had a legitimate commercial interest and intended to use the mark in its general field of activity. Its application was not dishonest or an attempt to sterilise unrelated activity.
4. Infringement. YouView’s set-top boxes and service involved databases, database programs, database management, compilation of information into databases, access to databases and telecommunications services. Those goods and services were identical or highly similar to the relevant registered specifications. The marks were highly similar visually, aurally and conceptually.
5. The likelihood of confusion had to be assessed by reference to the actual context in which YouView used its sign. The convergence of television, streaming, databases and telecommunications, and the bundling of the service with telecommunications services, made confusion likely. The absence of evidence of actual confusion was not decisive. Comparative advertising cases did not justify reducing the protection afforded by Total’s registration.
6. The use was liable adversely to affect the essential origin function of the mark and its other functions. Total’s infringement claim succeeded, YouView’s invalidity counterclaim was dismissed, and no reference was made to the CJEU.

First-instance judgment. The judgment records an earlier IPO opposition decision and an appeal dismissed by Floyd J in [2012] EWHC 3158 (Ch), but those decisions were not binding in the present infringement proceedings.