Willans helps Total Ltd. sue YouView for trade mark infringement

Following success in the appeal Court earlier this month, Total Ltd., a Gloucestershire based telecommunications company, has now issued High Court proceedings against YouView TV Ltd., a company chaired by Lord Sugar, for infringement of Total’s registered trade mark, YOUR VIEW.

This new claim by Total is the latest action in the legal battle between Total and YouView, as Total continue to attempt to protect their YOUR VIEW brand. It follows an earlier decision of the Trade Marks Registry where Total had opposed registration of YouView’s trade mark, and YouView’s subsequent and unsuccessful appeal to the High Court in respect of that decision (http://www.total-ltd.co.uk/youview-loses-appeal/).

YouView TV Ltd., has recently launched a Freeview TV platform which they have branded ‘youview’.  It is a joint venture backed by the major TV channels and broadband providers, to include the BBC, ITV, Channel 4, Channel 5, BT, TalkTalk, and Arqiva.

On 1 April 2010 YouView applied to the Trade Marks Registry to register the name YOUVIEW, presented in various forms in lowercase as ‘youview’, for use with various goods and services. However, Total had already registered the YOUR VIEW mark on 20 November 2009, well before YouView’s application, and which Total use as the trading name of their online customer portal, branded YourView.

The Total owned trade mark YOUR VIEW is registered with the Trade Marks Registry in respect of “Database programs and Databases” in Class 9; “Provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database” in Class 35; and “Providing access to computer databases; telecommunication services” in Class 38.

Total opposed YouView’s application in the Trade Marks Registry and the opposition proceedings were decided on 30 May 2012. The hearing officer found that YouView’s trade mark was “confusingly similar” to Total’s earlier trade mark in a range of goods and services (as set out in paragraph 53 of the decision on 30 May 2012, available at http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/t-challenge-decision-results-bl?BL_Number=O/216/12). These included “broadcasting,” “computer software, including software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data in compressed and uncompressed form,” “apparatus for telecommunications, data communications, satellite transmission, television and radio transmission and reception, electronic messaging, access to interactive services and access to the internet.” As a consequence, YouView’s application for the ‘youview’ trade mark in these goods and services was denied, and remains so today.

YouView appealed to the High Court for use of their trade mark with software embedded into set-top boxes (such as electronic programme guides) and the physical set-top boxes themselves, arguing that neither the trade marks nor the respective goods and services were confusingly similar. However on Friday 9 November 2012, Mr Justice Floyd issued his judgment, dismissing the appeal in its entirety (http://www.bailii.org/ew/cases/EWHC/Ch/2012/3158.html).

Following Total’s success in the appeal, they are now taking further steps to protect their trade mark. The High Court proceedings which have been issued were sent for service on Monday 26 November, and relate to YouView’s alleged infringement of Total’s trade mark.

Total is claiming that YouView is in breach of section 10 (2) of the Trade Marks Act 1994, because by use in the course of trade and without consent YouView have used their trade mark, which is identical or similar to the YOUR VIEW trade mark, and is used in relation to goods and services which are identical or similar to those for which Total have registered their mark, and there exists a likelihood of confusion including a likelihood of association between the marks.

The claim that Total has issued against YouView is for financial relief but also for an injunction which, if granted, will prevent YouView from using the ‘youview’ mark in a way that infringes Total’s trade mark.

Paul Gordon, Partner at Willans LLP solicitors, representing Total Ltd. comments “The YOUR VIEW trade mark has been registered to Total Ltd. since 20 November 2009, a fact that YouView were fully aware of when attempting to register their mark. On Friday 9 November, Mr Justice Floyd dismissed YouView’s appeal and took time to point out that not only was the hearing officer in the Trade Marks Registry right in her initial findings when she decided against registration of the ‘youview’ mark with certain goods and services, but that he agreed that there was similarity of the marks and similarity of the goods and services.”

Managing Director of Total Ltd., Stuart Baikie, said “Despite the recent vindication of our position in the appeal proceedings we believe that YouView has continued to act without regard to our registered mark and business interests. We have had no choice but to issue infringement proceedings and we are confident of success.”