High Court Rules on YouView infringement battle
The High Court in London has found YouView TV Limited liable for infringing telecommunication company Total Limited's registered trade mark "Your View".
Total, a company specialising in telecommunication services, registered the trade mark "Your View" in relation to these services in 2007. YouView TV Ltd is a subscription-free internet service that was launched in 2012 as a joint venture between broadcasters BBC, ITV, Channel 4 and Channel 5 and telecommunication companies BT, Talk Talk and Arqiva. Since the launch in 2012 YouView has spent in excess of £25 million marketing and advertising this product.
In 2010, Total who had opted into the trade mark monitoring service was informed by the Intellectual Property Office of an application to register the mark "YOUVIEW". Total successfully opposed the application.
Despite having their application for registration refused YouView continued to market their products under the name which inevitably resulted in infringement proceedings. YouView attempted to claim that Total's mark was invalid and refused to change its brand name.
In its decision the High Court discounted YouView's submissions. It was held that Total's mark had been infringed by YouView's persistent use and that a strong likelihood of confusion on part of the public between the marks existed.
YouView is intending to appeal this decision. A spokesperson for the company said: “We plan to appeal against the court’s decision, as we maintain there is no confusion between our consumer-facing TV service, YouView, and the business-to-business billing platform, Yourview, provided by Total Ltd.”
Total is now seeking an injunction to prevent further use of the name YouView and intends to recover court costs and compensation resulting from the infringement. If YouView's appeal is dismissed they will have the nuisance of rebranding their YouView services and associated products.
This ruling serves as a stark reminder of the importance of conducting clearance searches before investing and marketing a new brand. It also highlights the need for vigilance on part of the proprietor to enable them to maintain and protect the exclusivity of their mark.
For information or advice on similar issues and other trade mark related matters, contact the Blake Morgan Intellectual Property team.