Shorts International Limited v Google LLC

Trade marks incorporating descriptive terms receive protection only to the extent that their distinctive features, rather than the descriptive elements, identify origin. The meaning of a term must be assessed at the relevant date and may extend beyond its traditional or principal meaning. A limitation is impermissible if it merely excludes goods possessing a characteristic instead of defining a genuine sub-category. In assessing confusion, the court must consider the sign as used, its local context, and the distinctive and descriptive elements of the marks. Similarity arising only from common descriptive matter will generally weigh against confusion, although it does not make confusion impossible. For extended protection, reputation, a link and actual or seriously probable injury must be established. Passing off requires substantial deception as to trade origin or authorisation; mere association or wondering is insufficient.

Shorts International Limited alleged that Google LLC infringed its registered trade marks incorporating “Shorts” and “ShortsTV” through the YouTube Shorts service, under sections 10(2) and 10(3) of the Trade Marks Act 1994, and committed passing off. Google challenged the validity of the marks, relied on partial revocation for non-use, and pleaded the section 11(2)(b) defence.

The court determined the meaning of “shorts”, the validity and acquired distinctiveness of the marks, the permissible scope of any specification limitations, genuine use, likelihood of confusion, reputation and injury, honest practices, goodwill, misrepresentation and damage.

1. Validity. At the relevant dates, “shorts” included short-form audiovisual content beyond short films. The 2018 device marks containing “Shorts” and a play symbol were not invalid under sections 3(1)(b), (c) or (d), because the combination created an overall impression going beyond descriptive indications. The word mark “SHORTSTV” was descriptive and devoid of distinctive character for the goods and services identified in Annex 3. None of the marks had acquired distinctive character through use by 8 February 2022.
2. Limitations. The proposed exclusions for “short films” did not define a sufficiently clear sub-category. They instead referred to characteristics which could be present without changing the nature, function or purpose of the goods or services. They therefore did not overcome the invalidity objections.
3. Non-use. Use of “ShortsTV+” did not alter the distinctive character of the registered device marks. It constituted genuine use for software, but the fair specification was limited to “software for accessing audiovisual entertainment”. The fair specification of entertainment services was limited to production, presentation and distribution of films, videos and television programmes. The 2018 Marks were partially revoked from 5 October 2023.
4. Section 10(2). Some Google uses were purely descriptive. Other composite signs operated both descriptively and as indications of origin. The distinctive character of the claimant’s marks was low and arose from the particular combination of “Shorts” and the red play symbol. Similarity between the marks and Google’s signs arose principally from descriptive elements. No likelihood of direct or indirect confusion existed.
5. Section 10(3). The marks did not have the necessary UK reputation. Even assuming a reputation amongst consumers of short films, Google’s signs might bring the marks to mind, but there was no detriment to distinctive character or repute. The word “shorts” had acquired an additional descriptive usage, but the distinctive character of the marks themselves was unaffected.
6. Section 11(2)(b). The defence would have failed if there had been a likelihood of confusion or significant detriment. Google knew of the marks and the claimant’s objections before the UK launch and proceeded at its own risk. Its descriptive justification would not have sufficed in those circumstances.
7. Passing off. The claimant had protectable goodwill amongst a limited group, but Google’s use did not misrepresent trade origin or authorisation. The claims under sections 10(2) and 10(3), and in passing off, failed.