YouView loses High Court appeal against Trade Mark Registry finding over brand name owned by Total Ltd.
‘YOUVIEW' trade mark is found "confusingly similar" to Total Ltd.'s earlier ‘YOUR VIEW' trade mark
14 NOVEMBER 2012, CHELTENHAM, UK: A High Court judge, Mr Justice Floyd, on Friday dismissed the appeal of YouView TV Ltd., chaired by Lord Sugar, against an earlier finding by the UK Trade Marks Registry that the name of its new platform, ‘youview', is confusingly similar to an earlier trade mark, YOUR VIEW, held by Total Ltd., a Gloucestershire based telecommunications company.
YouView TV Ltd. has recently launched a Freeview TV platform which they have branded ‘youview'. It is a joint venture backed by the major TV channels and broadband providers, to include the BBC, ITV, Channel 4, Channel 5, BT, TalkTalk, and Arqiva. It comprises a digital TV service and access to TV and on demand services via a set-top box.
On 1 April 2010 YouView TV Ltd. had applied to the Trade Marks Registry for the name YOUVIEW, presented in various forms in lowercase as ‘youview', for use with various goods and services.
On 18 June 2009, with the assistance of their trade mark attorneys Wynne-Jones IP, Total Ltd. had made an earlier application to register the trade mark YOUR VIEW, which is the trading name of their online customer portal. The YOUR VIEW mark was registered on 20 November 2009, well before YouView's application.
Total Ltd. initially opposed YouView's application in the Trade Marks Registry and the opposition proceedings were decided on 30 May 2012. The hearing officer found that YouView's trade mark was ‘confusingly similar' to Total's earlier trade mark in a range of goods and services.
YouView appealed to the High Court for use of their trade mark with software embedded into set-top boxes (such as electronic programme guides) and the physical set-top boxes themselves. YouView argued that neither the trade marks nor the respective goods and services were confusingly similar. However on Friday 9 November 2012, Mr Justice Floyd issued his judgment dismissing YouView TV Ltd.'s appeal in its entirety, with the result that the earlier decision of the Trade Marks Registry stands.
Paul Gordon, Partner at Willans LLP Solicitors, representing Total Ltd. comments "The Your View trade mark has been registered since 20 November 2009, a fact that YouView were fully aware of when attempting to register YouView. Our client has done the right thing in defending a brand that is pivotal to their business and is legally theirs. We welcome the judge's ruling."
Managing Director of Total Ltd., Stuart Baikie, said "We are delighted with the judgment. YourView is a key differentiator for us and is a significant part of our business and future growth strategy, so it was absolutely imperative that we defended the trade mark that was granted to us in 2009. Our opposition to the youview trade mark has now been fully vindicated."
"Our customer base and reputation is built on a winning combination of telecommunications services combined with our unique support systems, of which YourView plays an essential part. YourView enables us to deliver services that are outside the scope of our competitors and we have placed significant resource and investment into integrating all new and existing systems under the global YourView umbrella. It is the root of our service evolution and development roadmap, so therefore critical to our growing business. We welcome the High Court's judgment," concludes Baikie.