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YouView loses High Court appeal against Trade Mark Registry finding over brand name owned by Total

14 November 2012

Willans LLP solicitors, acted on behalf of Total Ltd. assisting them to successfully resist an appeal to the High Court in respect of the ‘youview’ brand.

On 9 November 2012 Mr Justice Floyd handed down judgment for an appeal he had heard in the High Court on 1 November 2012.

The court dismissed the appeal of YouView TV Ltd., chaired by Lord Sugar, against an earlier finding by the UK Trade Marks Registry that the name of its new platform, ‘youview’, is confusingly similar to an earlier trade mark, YOUR VIEW, held by Total Ltd., a Gloucestershire based telecommunications company.

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. It comprises a digital TV service and access to TV and on demand services via a set-top box.

On 1 April 2010 YouView TV Ltd. had applied to the Trade Marks Registry for the name YOUVIEW, presented in various forms in lowercase as ‘youview’, for use with various goods and services.

On 18 June 2009, with the assistance of their trade mark attorneys Wynne-Jones IP, Total Ltd. had made an earlier application to register the trade mark YOUR VIEW, which is the trading name of their online customer portal. The YOUR VIEW mark was registered on 20 November 2009, well before YouView’s application.

Total Ltd. initially 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.

YouView then appealed against the decision of the Registry 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. YouView argued that neither the trade marks nor the respective goods and services were confusingly similar. Total Ltd. resisted the appeal with the assistance of Willans LLP, led by their dispute resolution partner, Paul Gordon. Total Ltd. were successful as Mr Justice Floyd dismissed YouView TV Ltd.’s appeal in its entirety, with the result that the earlier decision of the Trade Marks Registry stands.

Paul Gordon, partner at Willans LLP, comments “The Your View trade mark has been registered since 20 November 2009, a fact that YouView were fully aware of when attempting to register YouView. Our client has done the right thing in defending a brand that is pivotal to their business and is legally theirs. We welcome the judge’s ruling.”

Managing director of Total Ltd., Stuart Baikie, said “We are delighted with the judgment. YourView is a key differentiator for us and is a significant part of our business and future growth strategy, so it was absolutely critical that we defended the trade mark that was granted to us in 2009. Our opposition to the youview trade mark has been now been fully vindicated.”

Disclaimer: All legal information is correct at the time of publication but please be aware that laws may change over time. This article contains general legal information but should not be relied upon as legal advice. Please seek professional legal advice about your specific situation - contact us; we’d be delighted to help.
Paul Gordon LLB
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