Total Limited, a Cheltenham-based firm with the trademark “Your View” provides bespoke telecommunications services to individuals and businesses, and adopted “Your View” as the name for its interactive billing platform in 2007. It registered the trademark in the UK in 2009 for goods including “databases” and services  which include “telecommunications”. YouView is an internet television service with shareholders consisting of a mix of broadcasters and telecommunications companies that launched on the market in May 2012.   

In 2010, Total was alerted to an application to register YouView as a trademark, which it successfully opposed. The UK Intellectual Property Office (UK IPO) does not automatically refuse trademark applications on the basis of the existence of earlier similar rights - the application to register YouView was brought to Total’s attention because it had asked its trademark attorneys to provide a monitoring service.

Despite a lack of success before the UK IPO, YouView continued to market its set top boxes and associated programming service.  In the decision last month, the High Court agreed that Total’s trademark had been infringed by this continued use, and YouView unsuccessfully counterclaimed that Total’s trademark Your View was invalid.

Consumer confusion

The test for a successful trademark infringement action is whether there is a likelihood of confusion on the part of the public, rather than actual instances of confusion in the market, and whether there is a real possibility that the companies could compete. The judge found that there was a strong likelihood of consumer confusion between the two marks and it was highly significant that the commercial partners behind YouView included telecommunications companies BT, Talk Talk and Arqiva, against whom Total compete.

95 per cent of YouView set-top boxes are supplied to customers as part of bundled services from the telecommunications companies which have invested in YouView. The judge found that this supported a general convergence of the television and telecommunications industries.  This all contributed to his finding that the marks were “confusingly similar”.

The decision is a reminder that registered trademarks offer powerful protection to applicants seeking to protect their own legitimate interests, regardless of the size of the applicant. In the judgment, it was the goods and services specified in Total’s trademark registration that were compared against YouView’s use - how Total had used Your View in practice as an online billing platform, was not relevant.

We are also reminded that the onus is on brand owners to actively police their brands and ensure they remain exclusive.  It also highlights the importance of conducting trademark clearance searches in all relevant markets prior to investing in, and launching new brands. It is far more expensive and inconvenient to rebrand after a product has been launched in the market.

Continuing convergence

This case refers to the likely continuing convergence of telephone, telecommunications, data transmission and video and TV streaming services. Brand owners in these industries would be advised to review protection and ensure it covers future intentions. In an internet age, services that were once very far apart are now being brought together, and co-existing brands that were once operating in seemingly separate industries, are now at risk of being used in a way that could lead to a risk of confusion amongst consumers. 

Sharon Daboul is trademark attorney at EIP in London.  She can be contacted on +44 (0)20 7440 9510 or sdaboul@eip.com