Total Ltd v Youview TV Ltd
| Jurisdiction | England & Wales |
| Judge | The Honourable Mr Justice Sales,Mr Justice Sales |
| Judgment Date | 16 June 2014 |
| Neutral Citation | [2014] EWHC 1963 (Ch) |
| Docket Number | Case No: HC12B04582 |
| Court | Chancery Division |
| Date | 16 June 2014 |
[2014] EWHC 1963 (CH)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Sales
Case No: HC12B04582
Simon Malynicz & Katherine Moggridge (instructed by Willans LLP) for the Claimant
Daniel Alexander QC & James Abrahams (instructed by Bristows LLP) for the Defendant
Hearing dates: 25/3/14–31/3/14
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
This is the hearing of a claim brought by the Claimant ("Total") alleging infringement of its registered trade mark, the sign "Your View", by the Defendant ("YV"). YV counterclaims for a declaration of invalidity and for rectification of the Register of Trade Marks in respect of the "Your View" mark.
This is the latest stage in a long-running contest between the parties regarding the use of the sign "youview" by YV in relation to a television programming service offered by it via set top boxes. YV sought to register six versions of the "youview" mark in 2010, but Total successfully opposed that registration at a hearing in the Intellectual Property Office ("IPO") before a Hearing Officer (Ms Pike). Her ruling is dated 30 May 2012.
YV appealed to this court, but its appeal was dismissed by Floyd J in November 2012: YouView TV Limited v Total Limited [2012] EWHC 3158 (Ch).
Despite these decisions and its failure to register the "youview" mark, YV continued to offer and promote its "youview" service and set top boxes to the public. Set top boxes produced by a number of manufacturers have capacity to operate the "youview" service and are licensed to be sold with "youview" brand markings on them.
Total now claims against YV for infringement of its "Your View" trademark arising out of these activities.
The Issues
The relevant legal framework is that set out in the Trade Marks Act 1994 ("the Act") and Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks ("the Directive"). The Act is to be construed, so far as possible, in conformity with the Directive, on usual Marleasing principles ( Case C-106/89 Marleasing SA v La Comercial Internacional de Alimentación SA [1992] 1 CMLR 305).
The issues requiring determination relate to the validity of Total's trade mark and the alleged infringement of that trade mark:
Validity
i) is the specification of Total's trade mark invalid to any extent on the ground that the goods or services in the specification of the trade mark are not identified with sufficient clarity or precision? This requires consideration of the judgment of the Court of Justice of the European Union (Grand Chamber) in Case C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2013] RPC 11 (commonly known as the IP Translator case).
ii) is the specification of Total's trade mark invalid to any extent on the ground that it is devoid of distinctive character and/or is descriptive (see section 3(1)(b) and (c) of the Act; Article 3(1)(b) and (c) of the Directive)?
iii) Is the specification of Total's trade mark invalid to any extent on the ground that Total's application was made in bad faith (see section 3(6) of the Act; Article 3(2)(d) of the Directive)?
Infringement
iv) Are the goods and/or services in relation to which YV's "youview" sign has been used identical or similar to those specified in Total's trade mark?
v) Is the sign, "youview", in stylised or word form similar to Total's trade mark?
vi) Taking account of the degree of similarity or difference in Issues 4 and 5 and all the relevant circumstances, including the context of the use of the sign, will there be a likelihood of confusion?
vii) Do YV's activities adversely affect the functions of the trade mark?
Issues relating to remedy, if Total succeeds in its infringement claim, have been postponed by the agreement of the parties to a later hearing, after these issues regarding validity and liability in relation to alleged infringement have been determined.
Issues 2, 4, 5, 6 and 7 have been the subject of relevant observations in the IPO decision and the judgment of Floyd J upholding Total's objections to the registration of YV's "youview" mark on the Register of Trade Marks. Mr Alexander QC for YV correctly pointed out that, for the purposes of the infringement claim before me, I am not bound by those observations and the rulings in those proceedings and made submissions with the objective of persuading me to come to different views on those issues. He also placed emphasis in his argument on Issue 1 (the IP Translator point) and Issue 3 (the bad faith point), which had not formed any part of the argument in the registration proceedings regarding YV's mark.
The Directive and the Act
Recital (11) to the Directive explains the general function of registered trade mark protection as follows:
"(11) The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive."
The Directive includes the following provisions:
"Article 2
Signs of which a trade mark may consist
A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Article 3
Grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;…
2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: …
(d) the application for registration of the trade mark was made in bad faith by the applicant.
Article 4
Further grounds for refusal or invalidity concerning conflicts with earlier rights
1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected;
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark. …
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. …
Article 13
Grounds for refusal or revocation or invalidity relating to only some of the goods or services
Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only."
The Act contains similar provisions, as set out below. There is no difficulty in this case about reading the Act in conformity with the relevant provisions of the Directive. The Act includes the following:
" 1 Trade marks.
(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may,...
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