Total write-off for YouView mark

A great Xmas present
for your legal team ...

When you have been working your socks off to make a success of an appeal against an office decision refuse to register your client's trade mark, the last thing you want to hear is something along the lines of:

"The hearing officer was engaged in a multifactorial assessment which her expertise ideally qualified her to undertake. This is not a fruitful field in which to discover an error of principle. I am unable to see any error of principle in her legal approach, or in the way in which she applied it to the comparison in this case. She reached a conclusion which she was entitled to reach".

This was indeed virtually the last thing that the losing legal team heard in YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch), these words being followed only by the death sentence: "The appeal will be dismissed".  YouView v Total, a decision last week from Mr Justice Floyd in the Chancery Division, England and Wales, actually fooled this Kat for a little: when he saw the names of the parties, he automatically assumed that YouView was somehow related to YouTube and that Total was a French-owned oil and gas giant.  As things turned out, he was wrong and the dispute turned out to be a great deal more parochial than he thought. And yet, having been attracted to the case -- and it was an IP case after all -- he could not tear himself away from it any more than a small child can cast aside a delicious bar of chocolate after he has taken the first bite.

So what was this action all about? It was actually an appeal against a trade mark opposition decision of Judi Pike (UK's Trade Mark Registry) that YouView's figurative mark, illustrated on the right, was not registrable because it was confusingly similar to Total Ltd's earlier word mark YOUR VIEW, registered in 2009 for "database programs and databases" (Class 9), "provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database" (Class 35) and "providing access to computer databases; telecommunication services" (Class 38). For the purposes of this appeal, registration of the figurative mark was sought for "apparatus for television and radio reception" and -- this being a fresh formulation of words for which registration was sought for the first time on appeal -- "software for embedding in apparatus for television and radio reception" in Class 9.

 As for the parties, Total was a small company based in Cheltenham, Gloucestershire, a town better known for horse-racing and its Ladies College. While YouView was not related to YouTube, it was related to plenty other big fish in the media pond, being

"... a joint venture between the BBC, ITV, BT, Channel 4, TalkTalk, Arqiva and Channel 5 whose business is to launch a device analogous to the Freeview set top box that allows reception of free-to-air digital radio and television broadcasts. Their YouView box will allow such reception, will include a recording facility and will also provide access to catch-up TV services over the internet such as the iPlayer service provided by the BBC. The YouView box will thus be an apparatus for television and radio reception and will require on-board software to carry out those, as well as its other functions".

One imagines, therefore, that the outcome of this appeal meant a considerable amount to YouView and its owners.

Cat socks (available here)

The finding that there was a likelihood of confusion was unsurprising, but that does not mean that this decision was devoid of interest.  The IPKat's long-standing friend Aaron Wood (head of trade marks and brand protection, Briffa) put his finger on the juicy strategic bit straight away when he commented:

"It was  interesting to see YouView’s strategy:  start out with a general specification in which the specific items of interest are contained deemed confusingly similar, then apply to amend the specification from the general to the specific at the appeal stage and see if you can win the appeal on that basis. There are then a few possible outcomes:

1. The amendment might be allowed but the applied-for mark, even with the new specification, would still be deemed to be confusingly similar; 

2. The amendment might be allowed with the result that the mark, with its new specification, would be deemed not to be confusingly similar; 

3. The amendment might not be allowed, so the question of whether the amended list is confusingly similar remains unresolved".

Floyd J at [15] was not persuaded that it would be unfair to consider the amended specification, but this was of no avail to YouView.

Triumphant celebration of this ruling by Willans LLP here