Shorts International Ltd v Google LLC

Likelihood of confusion in trade mark infringement is a global assessment, not an algorithm. A common element with low distinctiveness, particularly a descriptive element, may be given limited weight, provided the court does not treat similarity as irrelevant or count a factor twice. The average consumer may be treated as familiar with the registered mark, but imperfect recollection and the actual context of use remain relevant. A service name does not make every use of that name trade mark use. For enhanced protection, a mark must have a reputation among a significant part of the relevant public. Under registration provisions concerned with descriptive matter, modest figurative elements may be insignificant. A compound word remains descriptive unless its overall impression is sufficiently removed from the meanings of its parts.

Shorts International Ltd appealed from a judgment given by Michael Tappin KC, sitting as a Deputy Judge of the High Court, following a trade mark dispute concerning Google’s YouTube Shorts service. The High Court held that SIL’s figurative 2018 marks were valid but that its word mark SHORTSTV was invalid for most relevant goods and services. It rejected infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, partly revoked certain marks for non-use, and rejected passing off. SIL appealed on meaning, validity and infringement. Google conditionally cross-appealed on validity and non-use. The central issues were the treatment of descriptive common elements in assessing confusion, the existence of a reputation, and the validity of the SHORTSTV word mark.

The Court of Appeal dismissed SIL’s appeals concerning infringement and validity. Google’s conditional cross-appeal did not require determination because SIL’s appeals failed.

1. Appellate approach. The court applied the ordinary restraint required when reviewing factual and evaluative conclusions. The judge’s findings about the meaning of “shorts”, the relevant consumers and the evidence of reputation were open to him and disclosed no error of law.
2. Section 10(2). The requirements for infringement include trade mark use, similarity, similarity of goods or services and a likelihood of confusion. Use in relation to goods or services requires use for the purpose of distinguishing origin. The use of “Shorts” in particular horizontal menus, alongside labels such as Home and Videos, could be understood as descriptive. The fact that “Shorts” was the name of Google’s service did not make every use of the word trade mark use.
3. The assessment of confusion is global. The standard summary is not a rigid route map or a series of sub-tests. Descriptiveness may be considered when assessing the significance of similarities, including at the comparison stage, provided the court makes a nuanced assessment and does not treat the marks as simply dissimilar or count the factor twice. The shared word “shorts” and play symbol had low distinctiveness. The distinctive character of the 2018 marks lay principally in their combination, including the play symbol within the letter O and the colouring. Google’s signs lacked that distinctive combination, so there was no likelihood of direct or indirect confusion.
4. The average consumer was treated as familiar with the registered mark, but that did not mean that “shorts” had only one meaning for that consumer. Imperfect recollection remained relevant. The factual finding that the term included short-form audiovisual content beyond short films was available to the judge.
5. Section 10(3). The marks had no reputation among a significant part of the relevant public for the registered goods and services. The evidence showed awareness among narrow groups, but that did not satisfy the statutory requirement. The hypothetical findings on link and detriment therefore did not affect the result.
6. Validity. Under section 3(1)(c), figurative matter can be insignificant in the context of the mark as a whole. The word “shorts” and the play symbol were descriptive, but their particular combination gave the 2018 figurative marks an overall impression beyond the mere juxtaposition of descriptive indications. By contrast, SHORTSTV conveyed only shorts provided by televisual means. It was therefore descriptive for most relevant goods and services. The evidence did not establish acquired distinctiveness. The proposed limitation referring to “short films” was unclear and, in any event, too narrow because “shorts” extended beyond short films.

• Court of Appeal (Civil Division) SIL’s appeals on infringement and validity were dismissed. Google’s conditional cross-appeal was not considered.
• High Court of Justice, Intellectual Property List (ChD) Judgment was given on 31 October 2024 by Michael Tappin KC, sitting as a Deputy Judge of the High Court. The consequential order was made on 18 December 2024.