The English High Court recently ruled that Google’s use of “YouTube Shorts” did not infringe various SHORTS trade marks owned by Shorts International, a short film TV company.
A key issue in this long and complex judgement was a discussion of the meaning of the word “shorts”.
Google were able to successfully argue that in its brand “YouTube Shorts”, the “shorts” part of the brand would be understood to be simply descriptive of short-form content, so there would be no risk of confusion. That is, people would not look at the YouTube Shorts brand and think there was an association with the content of Shorts International.
Let’s take a step back and consider the general principles at play here.
A trade mark can be thought of as a “badge of origin”, distinguishing the goods and services of a particular business, from that of other businesses.
When a government body agrees to register a trade mark, they are effectively granting the trade mark holder the right to prevent others from using the same or a confusingly similar mark, in relation to the same or similar goods or services as covered by the trade mark registration.
But this monopoly is only granted if a mark has a sufficiently distinctive character. A mark that is purely descriptive of the relevant goods and services cannot be registered, because as a matter of policy, it would be overly restrictive to prevent traders being able to describe their products or services.
Of course, a brand has to convey a particular meaning, and so businesses are often keen to adopt and protect marks which are quite descriptive in nature. The UKIPO (and equivalent trade mark offices in other countries) will examine an application and decide whether it is descriptive or sufficiently distinctive for the purposes of registration.
However, even if this hurdle is passed and a mark is successfully registered, it may not be the end of the story. When enforcing your trade mark rights, the question of distinctiveness vs descriptiveness gets looked at in forensic detail, and in the context of the relevant goods and services, when being compared with the other relevant mark(s). So, you will be in a much better position to enforce your rights and protect your reputation, if you have a brand which is truly and highly distinctive.
Do get in touch with our lead trade mark attorney Kirsten Coetzee if you want to explore these topics in more detail.
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