Shorts International Ltd v Google LLC

Hearing dates: 2–4, 7–8 & 10–11 October 2024

Approved Judgment

I direct that no official shorthand note shall be taken of this judgment and that copies of the version as handed down may be treated as authentic.

This judgment was handed down remotely at 10.30 am on 31 October 2024 by circulation to the parties' representatives by email and release to The National Archives.

The Deputy Judge:

These proceedings concern the YouTube Shorts service of the Defendant (“Google”). The Claimant (“SIL”) contends that Google's use of certain signs in relation to its YouTube Shorts service amounts to infringement of SIL's registered trade marks and passing off. Google contends that there is no infringement or passing off and that SIL's registered trade marks are invalid.

The bulk of the oral submissions and cross-examination at trial was conducted by Mr Malynicz KC for SIL and Ms Lane KC for Google. However, Mr Selmi and Ms Adde each carried out some of the cross-examination for SIL and Ms Bowhill did some of the cross-examination and made some of the oral closing submissions for Google. I was glad to see junior counsel being given the opportunity to conduct some of the oral advocacy at trial. I am grateful to them all for their written and oral submissions in this interesting and complicated case. I am also grateful to Sheridans for SIL and Fieldfisher for Google for their preparation of the case and their work in making the trial run smoothly.

I am conscious that there has been a measure of public interest in this case. Therefore, because my judgment is lengthy, I have decided to set out a summary of my conclusions in a more digestible form, though my actual reasoning and conclusions are set out from paragraph 5 below. My conclusions, in summary, are:

i) At the relevant dates, the meaning of the word “shorts” extended beyond “short films” and included other short-form audiovisual content.

ii) SIL has a number of registered trade marks incorporating the word “shorts”. Most of those trade marks are valid, though the word mark “SHORTSTV” is invalid for most goods and services, and the other marks should be revoked for non-use for some goods and services. However, all SIL's trade marks have low inherent distinctive character, and SIL's use of its trade marks in the UK has not been extensive enough to enhance that distinctive character.

iii) Google has used the word “shorts” in various ways in relation to the YouTube Shorts service. Some of those uses are purely descriptive of the type of material on the service. Others, in combination with the YouTube name or logo, or with a derivative logo, act as indications of origin.

iv) None of Google's uses of signs including the word “shorts” gives rise to a likelihood of confusion as to origin. While there are significant similarities between the signs used by Google which include the word “shorts” and SIL's trade marks, the similarities concern the aspects which are descriptive rather than those which give SIL's trade marks their (low) distinctive character.

v) While the similarities between Google's signs and SIL's trade marks will give rise to a link in the minds of the limited group of UK consumers amongst whom SIL's trade marks have a reputation, Google's uses of signs including the word “shorts” will not cause damage to the distinctive character or repute of SIL's trade marks.

vi) If I had concluded that there was a likelihood of confusion or significant damage to the distinctive character or repute of SIL's trade marks, then I would have rejected Google's defence that it was using its signs in accordance with honest practices. However, as a result of my conclusions, SIL's claim of trade mark infringement fails.

vii) While SIL has protectable goodwill associated with its trade marks amongst a limited group of UK consumers, Google's signs do not misrepresent its service as being provided by SIL or in some way authorised by SIL. Therefore there is no passing off.

My judgment is structured as follows:

THE NATURE OF THE DISPUTE

YouTube Shorts and SIL's complaint

There was no dispute that YouTube is, and has for many years been, a very well known brand. The YouTube name and the YouTube logo are highly recognisable, whether used separately or, as shown below, together:

YouTube Shorts is devoted to videos which are less than 60 seconds long and in vertical format. Google launched the YouTube Shorts service in the UK in June 2021, following earlier launches in India in September 2020 and the USA in March 2021.

YouTube Shorts is available through the YouTube website at youtube.com. If a user accesses the YouTube website they will be taken to a home page, on which the word “Shorts” with accompanying logo is the second entry in the sidebar:

If the user scrolls down the sidebar they will see further options, including YouTube Premium, YouTube Music and YouTube Kids. If the user scrolls down the main part of the home page they will find a number of “shelves”, such as the “Breaking news” shelf shown above. Those shelves include “Shorts” shelves, which look like this:

If the user clicks on “Shorts” in the sidebar, or on a video on a Shorts shelf, they will be taken to a feed of videos. The feed looks like this:

The first video in the feed will play automatically, and will repeat unless the user scrolls to the next video, which will then play automatically.

If the user uses the search function they will be taken to a page of suggested videos, on which videos in the YouTube Shorts service are distinguished from other videos by use of the word “SHORTS” and accompanying logo in the bottom right hand corner:

Creators have their own channel pages with links that include “Shorts”. Clicking on the “Shorts” link takes the user to all the YouTube Shorts videos uploaded by that creator, as in the example shown below:

YouTube Shorts is also available on YouTube apps for mobile devices and smart TVs. The evidence was that the majority of the use of YouTube Shorts is through the app on mobile devices.

On mobile devices the YouTube app is accessible by clicking on an icon consisting of the YouTube logo with the name “YouTube” underneath. The home page of the app looks like the left hand illustration below; “Shorts” with accompanying logo appears second from the left at the foot of the screen:

If the user scrolls down the home page they will find shelves, including the “Shorts” shelf which looks like the right hand illustration above.

If the user clicks on an entry in the Shorts shelf, or on the Shorts link at the bottom of the screen, they are taken to the Shorts feed, which looks like the left hand illustration below. Again, the first video in the feed will play automatically, and will repeat unless the user swipes to the next video, which will then play automatically.

If the user uses the search function on the home page, in the search results videos in the YouTube Shorts service are distinguished from other videos as shown in the right hand illustration above.

Unlike in the YouTube website (and the smart TV app), the mobile app contains creation and upload tools accessible by clicking on the “+” in the middle of the bottom of the screen. That takes the user to a page where they are given options of “Video”, “Short” or “Live”.

On a smart TV, the user accesses the YouTube app by clicking on an icon containing the YouTube logo and the name “YouTube”. The home page of the app on a smart TV does not contain a link to the YouTube Shorts service in the sidebar. Instead, there are a number of shelves, including a “Shorts” shelf, which looks like this:

If the user uses the search function, results are shown with videos in the YouTube Shorts service identified in a similar manner to that used for the Shorts shelf on the home page.

Again, clicking on a video on the Shorts shelf or in the search results takes the user to the Shorts feed, which looks like the illustration below. The user can move between videos using the up and down buttons on the remote control.

In initial versions of the smart TV app, prior to November 2022, the Shorts feed was presented with black bars either side of the videos, and it was not possible to move up and down between videos.

SIL complains about each instance...