Home / Google Succeeds in Defending Trade Mark Infringement Claim in Respect of YouTube Shorts
13th November 2024
Tom Griffin, Solicitor
On 31 October 2024, the High Court held that Google LLC (“Google”) had not infringed various trade mark registrations of Shorts International Limited (“SIL”) nor engaged in passing off through its use of certain signs in relation to YouTube Shorts.
SIL, a short-form entertainment company with a particular focus on the distribution of short films, is the proprietor of various trade mark registrations for figurative marks which incorporate “shorts” and “shortstv” (the “Figurative Marks”), as well as for the word mark “SHORTSTV” (the “Word Mark”).
In response to the rise of TikTok, Google launched YouTube Shorts, a service focused on vertical videos that are less than 60 seconds in duration, in the United Kingdom in June 2021. In relation to YouTube Shorts, Google used “shorts”, besides in a purely descriptive manner, in combination with the YouTube name, logo or a derivative logo.
SIL alleged that Google had infringed its registrations for the Figurative Marks and the Word Mark, as well as engaged in passing off YouTube Shorts as being connected to SIL. Google denied the allegations and counterclaimed that SIL’s registrations for the Figurative Marks and the Word Mark were invalid.
A core issue of fact to be determined was the meaning of the word “shorts”. It was held that “shorts” was not limited to “short films” but also included other short-form audiovisual content.
The registration for the Word Mark was held to be invalid for most goods and services on the basis that it was exclusively descriptive and, furthermore, SIL failed to produce sufficient evidence to establish that it had acquired distinctiveness.
The Figurative Marks were deemed to have low inherent distinctive character and not to be exclusively descriptive due to the combination of two descriptive elements, being the word “shorts” and a red play symbol located within the “o”. The registrations for the Figurative Marks were, however, revoked for non-use for some goods and services.
SIL alleged trade mark infringement under sections 10(2) and (3) Trade Mark Act 1994 (“TMA”).
In respect of s10(2) TMA, it was held that Google’s use of various signs including “shorts” did not give rise to a likelihood of confusion on the part of the average consumer because, despite the similarities with the Figurative Marks, the distinctive element of the Figurative Marks (i.e. the combination of the word “shorts” and a red play symbol located within the “o”) was absent from Google’s signs.
In respect of s10(3) TMA, it was held that the Figurative Marks did not have a reputation in the UK. It was, however, considered that even if they did then Google’s activities had not diluted nor tarnished the reputation of the Figurative Marks.
Finally, SIL’s claim for passing off was unsuccessful because, for reasons detailed above, it was not accepted that a substantial number of members of the public would be misled into believing that YouTube Shorts comes from or has been authorised by SIL.
This case serves as a caution to those considering applying to register a trade mark which predominantly consists of elements which are descriptive of the goods and/or services. Whilst the trade mark may avoid being deemed exclusively descriptive, the protection afforded will, subject to being able to adduce sufficient evidence to establish acquired distinctiveness, be limited.
If you have any queries relating to trade mark registration, subsistence, infringement, invalidation or revocation, please contact a member of our intellectual property department on 0161 832 3434.