In Shorts International Ltd v Google LLC ([2024] EWHC 2738 (Ch), 31 October 2024), the High Court has found Google’s use of the term ‘shorts’ in relation to short-form video content did not amount to an infringement of Short International Limited’s trade marks or passing off.
Background
Google’s YouTube Shorts service, relating to short-form videos (i.e., less than 60 seconds), launched in the United Kingdom in June 2021.
Short International Limited (‘SIL’), a short-film distribution and production company, sued Google for trade mark infringement of its various SHORTSTV/SHORTS trade marks listed below, claiming infringement under Section 10(2) (likelihood of confusion) and Section 10(3) (detriment to its repute and distinctive character) of the Trademarks Act 1994, and passing off:
Google denied all claims, asserting that its use did not amount to infringement. It raised a defence under Section 11(2)(b) on the grounds that the term ‘shorts’ is descriptive of short-form video content.
Google also issued a counterclaim challenging the validity of SIL's trademark registrations. It argued that SIL had not used its stylised trade marks for some of the goods and services and that SIL’s trade marks should be partially revoked for non-use.
Judgment
Google successfully defended against all claims of infringement and was partially successful in its counterclaims.
On the question of validity, the court agreed with Google that the evidence submitted showed the term ‘shorts’ to be widely used and understood to refer to short-format audio-visual content, rendering SIL’s word mark SHORTSTV invalid as it consisted of a combination of non-distinctive elements. Further, the evidence of use filed by SIL fell short of the threshold for demonstrating acquired distinctiveness. However, the court found the combination and arrangement of the word elements with the ‘play’ symbol rendered in red inside the letter ‘O’ to imbue SIL’s stylised marks with a sufficient degree of distinctiveness (albeit low) to be validly registered.
With respect to non-use, the court found that SIL’s use of its stylised SHORTSTV marks combined with a ‘+’ (i.e., SHORTSTV+) was sufficient to demonstrate use, the ‘+’ symbol not adding anything significantly distinctive to the marks. The court found that the distinctive character was retained rather than altered. However, the court found the Class 9 goods (computer and electronic entertainment software) and entertainment services in Class 41 to be too broad and the specifications were narrowed to reflect the use evidence submitted by SIL.
Turning to SIL’s infringement and passing-off claims, whilst the court accepted that the average consumer would appreciate the similarity between SIL’s marks and Google’s use of ‘shorts’, ‘YouTube shorts’ and ‘shorts’ in combination with a ‘play’ symbol, it found the word ‘shorts’ and the ‘play’ symbol to be non-distinctive, indicating the characteristics of the material in question. The distinctive character of SIL’s marks arising from the specific combination of the word ‘shorts’ and the ‘play’ symbol rendered in red in the letter ‘O’ was not present in Google’s uses, meaning there was no likelihood of confusion under Section 10(2).
In consideration of SIL’s claim to a reputation in the United Kingdom under Section 10(3), the court found that its use was not sufficient to make out a reputation and, even if it did, Google’s use would not dilute the distinctive character of SIL’s marks, nor would it damage that reputation. This finding largely centred around the fact that:
- SIL’s distinctive character lay in the particular combination of elements represented in its stylised marks, which was not impacted by Google’s use; and
- SIL’s own witnesses accepted that YouTube Shorts was an excellent marketing tool for SIL’s services and had posted its own material on YouTube Shorts.
In the context of the passing off claim, SIL’s marks were found to have protectable goodwill in the United Kingdom (but not for the word ‘shorts’ per se). However, Google’s use of ‘shorts’ was not found to amount to a misrepresentation for analogous reasons that lead the court to dismiss the confusion claim, the fame and longstanding use of Google’s YouTube brand being decisive in the court’s finding that Google’s use did not amount to passing off.
As the claim of infringement failed, the court acknowledged that consideration of Google’s defence under Section 11(2)(b) was not necessary but commented that, if its use did amount to confusion or detriment to the distinctive character or repute of SIL’s marks, Google’s justification that ‘shorts’ was descriptive would not have been a sufficient justification.
Comment
The judgment serves as a reminder that enforcing trade mark rights consisting of weak distinctive elements can be challenging, unless there is significant evidence to support a claim to acquired distinctive character/secondary meaning, particularly where the marks have been used/registered in a stylised manner and the use complained of comprises a composite sign featuring a well-known brand.
This article first appeared in WTR Daily, part of World Trademark Review, on 15 November 2024.
For more information or if you have any questions, please contact Emily Roberts, Amy Salter or Tedi Halili or another member of the IP team.
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