High Court: IP TRANSLATOR can be raised as ground for invalidity

Total Ltd provides competitive bespoke telecommunications services which allow businesses to better manage global spending on telecommunications. Since 2007, Total had called this service 'Your View'. In 2009 it registered the mark YOUR VIEW in Classes 9, 35 and 38 of the Nice Classification in the United Kingdom. 

In 2008 the BBC developed a free TV programming and play-back service. In July 2010 YouView TV Ltd was incorporated and it applied to register the mark YOUVIEW in the United Kingdom. Total successfully opposed the applications. YouView's appeal to the High Court was dismissed by Floyd J in November 2012 (YouView TV Limited v Total Limited ([2012] EWHC 3158 (Ch))). Nonetheless, YouView continued marketing its service, and licensing production and marketing of set top boxes, under the 'youview' brand.

Total claimed that YouView's conduct infringed its registered mark YOUR VIEW. YouView counterclaimed for a declaration that the YOUR VIEW mark was invalid. In Total Ltd v YouView TV Ltd ([2014] EWHC 1963 (Ch), June 16 2014), Sales J agreed with Total's infringement claim and dismissed YouView's counterclaim. He declined to make references to the Court of Justice of the European Union (ECJ) as requested by YouView. YouView has announced its intention to appeal. 

Significantly, Sale J's held that IP TRANSLATOR can be raised as a ground for invalidity as well as during prosecution. 

With regard to validity, the issues were as follows:

1. Was the specification of Total's mark invalid to any extent on the ground that the goods or services in the specification were not identified with sufficient clarity or precision? 
   
   YouView claimed that, as a result of the decision in IP TRANSLATOR, Total's YOUR VIEW mark was invalid for lack of clarity, particularly in relation to the specification of "databases" in Classes 9 and 35 and also in relation to the specification of "telecommunications services" in Class 38. In response, Total submitted that (a) IP TRANSLATOR only applies as a ground for objection to registration of a mark, not as a ground of invalidity of a registered mark and (b) alternatively, the specification of the YOUR VIEW mark was sufficiently certain.
   
   Sales J rejected Total's first submission, but accepted the second. On Total's first submission, Sales J stated that, although IP TRANSLATOR was concerned with the issue of clarity of specification at the stage of application, it was "well arguable" that the reasoning of the ECJ extended to a case where a mark had been registered by the national authority but a competitor sought declaratory relief. On Total's second submission, Sales J stated that, after IP TRANSLATOR, the issue was whether there is such lack of clarity and precision in the specification given as to create an unacceptable or unreasonable level of uncertainty regarding the scope of protection given by the mark, having regard to the context in which it was to operate. Sales J's view was that, although there may be some element of uncertainty at the margins about whether something is a computer database, or a database program, or a telecommunications service, there is no significant doubt about the core meaning of those terms and no unacceptable uncertainty regarding their scope of application.



2. Was the specification of Total's mark invalid to any extent on the ground that it was devoid of distinctive character and/or was descriptive? 
   
   Sales J considered that the YOUR VIEW mark was distinctive to a proper degree meriting protection according to the required standard that it cannot be regarded as consisting exclusively of relevant descriptive matters. He stated that the phrase 'your view' was typically used in normal language to refer to a person's opinion or particular visual perspective; but in the context of use of the mark, it was employed to describe an interactive and responsive telecommunications service to meet customers' telecommunications needs. The viewing of the data was only one necessary, but essentially subsidiary element in the provision of that service.



3. Was the specification of Total's mark invalid to any extent on the ground that Total's application was made in bad faith? 
   
   Sales J rejected this attack on the validity of Total's registered mark. He stated that he was satisfied by Total's evidence that it applied for its mark for its own entirely legitimate business purposes and not because it had an inkling that YouView might use the brand 'youview'.

With regard to infringement, the issues were as follows:

1. Were the goods and/or services in relation to which YouView's 'youview' sign had been used identical or similar to those specified in Total's mark?
   
   Sales J answered 'yes'. The ambit of Total's specification could only be reduced in light of the actual use made of the mark by Total after five years, and in the meantime Total was entitled to seek to enforce the protection provided by its mark on the basis of notional and fair use across the breadth of the goods and services for which it is registered.



2. Was the sign 'youview' in stylised form (depicted below) or word form similar to Total's mark?
   
   
   Sales J answered 'yes', notwithstanding the different style of presentation of the 'youview' sign.



3. Taking account of the degree of similarity or difference in Issues 1 and 2 above and all the relevant circumstances, including the context of the use of the sign, would there be a likelihood of confusion?
   
   Sales J answered 'yes'. He observed that there was convergence of the relevant TV and telecommunications markets. The commercial partners behind YouView include telecommunications companies with whom Total competes in relation to the services it offers. The evidence shows that the YouView set top boxes are often supplied bundled together with telecommunications services offered by those companies. In these circumstances, and given the overall close similarity in the aural, visual and linguistic content of the 'Your View' and 'youview' signs, Sales J considered there was a strong likelihood of confusion on the part of the public.



4. Do YouView's activities adversely affect the functions of the mark?
   
   Sales J answered 'yes'. If YouView uses its 'youview' sign as it has been and is doing, it was likely that the average consumer would be confused in relation to the origin of the goods and services being offered to them. YouView's actions were therefore liable to have an adverse effect upon the functions, including the "essential function", of Total's mark.

Catherine Cotter and Vanessa Marsland, Clifford Chance, London