Trademark cases are littered with examples of disputes between large businesses and smaller ones. However, without knowledge of the factual background to the dispute, it is not always clear if it is the larger party who is acting as a bully or the smaller party who is seeking to extract some additional benefit (usually cash) from the well-funded, larger business.

The attention of the casual observer - and perhaps the less casual observer - can be drawn to cases where the parties differ significantly in size and where the case appears, on the face of it, to favour strongly one party.  Generally, the party with the weaker case would not continue to fight unless some other tactical advantage is sought, perhaps that the well-funded party will pay simply to avoid further time and uncertainly pursuing the legal proceedings - or if the weaker party is the larger business, they may hope that the smaller party will simply give up rather than diverting funds to the dispute.

Approaching YouView TV Ltd v Total Ltd ([2012] EWHC 3158 (Ch)), it is difficult to understand why the well-funded appellant, YouView TV Ltd, continues to pursue what, on the face of it, appears to be a very weak case (not just the authors' view, but that of Mr Justice Floyd). Is this a large business seeking to assert itself unreasonably against the small, helpless business, Total Ltd, or has Total's dealing with YouView in some way forced YouView to pursue these proceedings? 

On November 9 2012 the Hon Mr Justice Floyd, sitting in the High Court of England and Wales, dismissed the appeal sought by YouView. YouView is a joint venture between the BBC, ITV, BT, Channel 4, TalkTalk, Arqiva and Channel 5, whose business was to launch a device analogous to the Freeview set top box that allowed reception of free-to-air digital radio and television broadcasts. It offers viewers access to 70 live Freeview channels and a seven-day catch-up service.

YouView sought to register the device mark YOUVIEW in Classes 9, 38 and 42.

Total Ltd, an online customer service portal run by Total Telecommunications Ltd, had registered the word mark YOUR VIEW in classes 9, 35 and 38 in November 2009.

Total successfully opposed YouView's registration in May 2012.

YouView appealed this decision, but Mr Justice Floyd found strongly in favour of the respondent, Total.

YouView made three criticisms during the hearing of the way in which the original hearing officer had made her comparison of the marks and gauged the likelihood of confusion. These were that:

1. The marks should not have been compared as two-word phrases, as YouView's mark was a composite single word embedded in a logo.
2. The conceptual element of the two marks differed. 'YouView' was perhaps imperative, whilst 'your view' was possessive.
3. The two marks were not aurally similar. YOUVIEW had assonance and YOUR VIEW did not.

Mr Justice Floyd dismissed each of these criticisms:

1. The hearing officer was clearly aware of the one word/two word distinction, but regarded it as overly analytical in this case. She also took the logo into consideration. Mr Justice Floyd said that he could not detect any error of principle in the visual comparison of the marks.
2. Mr Justice Floyd agreed that there was a conceptual difference, albeit a subtle one, but said that the hearing officer had sufficiently taken this into account.
3. Aural similarity is a matter of judgement, and Mr Justice Floyd agreed with the hearing officer's assessment.

Mr Justice Floyd concluded that:

"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 the conclusion she was entitled to reach."

Mr Justice Floyd ordered that the appeal be dismissed. In such cases the losing side, YouView, must also bear the costs of the respondent Total.

However, since this very clear cut judgment, YouView has stated in the press that it has no intention of changing its name. YouView fought Total's opposition to its trademark registration very hard. YouView launched its subscription-free digital TV service in July 2012 and the potential costs of a rebranding would be significant.

Total have said that they will soon be taking further infringement action in the High Court, likely to include seeking an injunction limiting YouView's use of the brand, damages and costs, as they believe that YouView are still acting without regard to their registered mark and business interests. Total's managing director, Stuart Baikie, is quoted as saying:

"Whilst we have no doubt that they will defend those proceedings, we believe that the appeal court has already considered many of the issues that will come before the court in the infringement proceedings, so we are naturally optimistic about our prospects in that case."

Total have yet to start any proceedings. For YouView to continue using the name and brand they have built up and invested in, they may now be considering seeking a licence or consent from Total.

If the infringement claim does go ahead, it will be interesting to see how the judge differentiates, if at all, the previous opposition action and the infringement claim.

Further developments are awaited with interest. Whatever the underlying motivations of the parties, it would seem unusual for YouView not to do everything in its power to resolve this dispute rather than face the cost and negative PR of rebranding should it lose infringement proceedings.

Nick Bolter and Chime Dorjee, Edwards Wildman Palmer UK LLP, London