Descriptive words II: stylisation sufficient this time

What has happened?

• The High Court (IP list) has found that registrations for SHORTS and SHORTSTV in logo form are sufficiently distinctive for registration for audiovisual content and entertainment services etc but word only forms of the marks are not. 
• This illustrates that even a relatively straight forward logo can sometimes be sufficient to confer distinctiveness on a mark overall (provided it is more than a mere "figurative leaf" of protection).
• However, the decision should be contrasted with that in the BUILD case where a similar degree of stylisation was held not to confer distinctiveness to the mark as a whole (see our article here).
• Despite being sufficiently distinctive for registration, the SHORTSTV logo registrations were given a very narrow scope of protection. They were not infringed (no likelihood of confusion) as a result of Google's use of various Shorts marks for short videos. This was so despite the fact that the Google Shorts marks contained a triangular play logo and used the colours red, white and black like the earlier marks.
• The decision illustrates that, even where relatively descriptive marks are held to be valid, enforcing them is often difficult. 
• The case is also interesting in that the defendant, Google, conducted searches to determine whether there was any evidence of actual confusion in the marketplace. The lack of such evidence supported the judge's finding of no likelihood of confusion. Given that UK courts increasingly want to see evidence of actual confusion (especially as time goes on), the lack of such evidence was powerful.

Want to know more?

What was the case about?

Shorts International Limited (SIL) is a short film distribution company based in the UK. It owns UK trade mark registrations for the marks SHORTSTV (in word only and logo forms) and SHORTS (in logo form). 

It alleged that Google's use of "Shorts" (in word only and logo forms) in connection with Google's YouTube Shorts service infringed SIL's registered trade marks, and constituted passing off.

YouTube's allegedly infringing uses

SIL's registered trade marks

 SHORTSTV (word only)

Validity of SIL's word marks 

The judge found that the SHORTSTV word mark was simply a combination of two terms descriptive for short media clips; the combination of these words did not create an impression that was sufficiently removed from that created by the two words separately. The registration was therefore invalid (except in relation to computer games etc). 

Validity of SIL's logo marks 

In contrast, SIL's SHORTS and SHORTSTV logo marks possessed the minimal degree of distinctiveness necessary for registration. While the judge held that the "font and the contrast between the lettering and the background are insignificant in the context of the mark as whole", he considered that the red play symbol inside of the letter "O" combined with the other elements of the marks was sufficient to confer the minimal degree of distinctiveness for validity. 

While the judge commented that marks should not be registered simply because of the inclusion of a mere "figurative figleaf" (ie figurative content that does not impact the overall appreciation of the mark), it considered that the overall impression created by the logo marks here went beyond a mere juxtaposition of two descriptive elements. 

No Infringement

Despite some of SIL's registrations being valid, they were not infringed. There was no likelihood of confusion and no evidence of actual confusion. Any similarities between the marks related to descriptive aspects rather than aspects which gave the SIL marks their low distinctive character. 

This included the play symbol (which appears in both marks) which was an indication that the goods could be played. The different colours and placement of those symbols was sufficient to distinguish the marks.

For the same reasons, SIL's passing off claim failed. 

No evidence of actual confusion 

Google conducted extensive research into the use of YouTube Shorts and submitted evidence on that research. This included reports summarising feedback from press creators and users at the time of the UK launch of YouTube Shorts, and consumer studies on YouTube Shorts. Google monitored press and social media and worked with community management agencies to understand what the public were thinking about YouTube and its product. Google submitted that in all these instances, no confusion was identified. 

This was an interesting but potentially risky tactic employed by Google which paid off as the lack of evidence of actual confusion played a factor in the judge's conclusion that there was no likelihood of confusion. 

Impact of context

Additionally, the context of the use of the signs also negated findings of infringement, particularly in relation to the prominence of the YouTube brand. The judge determined that in the vast majority of cases, users of YouTube Shorts would be aware that it is a YouTube (and accordingly a Google) service and so would understand that the use of the word "Shorts" was describing the nature of the videos they were viewing on YouTube, even among users with which SIL had established goodwill. 

What does this mean for you?

• The case provides an interesting example of how a relatively simple figurative element can sometimes confer sufficient distinctiveness to an otherwise descriptive word.
• However, it also show how difficult it can still be to enforce such registrations successfully. Marketing teams should take note.
• The case is also notable for the fact that the defendant conducted searches to try to find instances of actual confusion. The lack of such evidence was powerful support for the finding of no likelihood of confusion.