Shorts International Limited v Google LLC

Where invalidity or revocation affects only part of a trade mark specification, the court may determine the appropriate narrowed specification on the evidence and submissions. The proprietor need not amend its pleading merely to invite that limited declaration. A very late amendment is governed by the court’s case-management discretion. Relevant considerations include the nature and strength of the proposed case, the timing and reasons for the application, the prejudice to both parties, clarity and particularity, and the effect on the trial and other court users. An amendment may be allowed where the issue is properly arguable, can be dealt with within the existing timetable, and causes no material evidential or procedural prejudice.

Shorts International Limited owned registered trade marks including SHORTS and SHORTSTV. Google LLC challenged the marks under sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994, and sought revocation for non-use under section 46.

During the trial, Shorts International contended that any invalidity should be confined to goods and services relating to short film content, leaving the remaining specification intact. Google argued that this position required an amendment and applied, very late, to add deceptiveness and broaden its non-use case. The central issues were whether Shorts International needed to amend and whether Google should be permitted to amend during the trial.

1. Limited invalidity and pleading. Section 47(5) of the Trade Marks Act 1994 requires invalidity to relate only to the goods or services in respect of which the grounds exist. The court therefore determines the appropriate scope of the specification in light of the evidence and submissions. A proprietor need not amend its pleading merely to advance a position as to the resulting narrowed specification. The same approach applies to revocation for non-use under section 46(5), which is materially identical. The approach was supported by Merck v Merck Sharp and Dohme [2017] EWCA Civ 1834, Stichting BDO v BDO Unibank [2013] EWHC 418 (Ch) and the example discussed in Fidelity v Fidelis [2018] EWHC 1097 (Pat).
2. Shorts International had adequately flagged its position in its re-amended pleading. The precise wording and scope of any excision remained matters for determination on the evidence, including the issues identified by Postkantoor.
3. Late amendment. The court applied the approach described by Carr J in Quah v Goldman Sachs [2015] EWHC 759 (Comm). Google could and should have pleaded deceptiveness and the broader non-use case earlier, particularly after Shorts International identified the limited scope of the existing attacks. Nevertheless, the amendments were arguable, required no further evidence, and could be dealt with in closing submissions without an adjournment or disruption to the trial. The balance of prejudice therefore favoured allowing them.
4. Google’s application to amend its pleading was allowed. Shorts International was not required to amend its pleading to advance the proposed limited-specification case.