British TV Channels & Telcos infringe trademark

Posted: 3 years ago in: Case Study, News, Trademark InfringementPosted By admin

infringe trademark - trademark infringement

 

British TV Channels & Telcos infringe trademark

Does the brand “youview” infringe the registered trademark “YOUR VIEW”?

  • High Court finds British TV Channels & Telcos infringe trademark rights. Total Ltd., a UK company, applied to register a trade mark for YOUR VIEW in June 2009, and it was  registered a few months later.
  • Total buys mobile telecommunications time and fixed line capacity from various suppliers (for example, from BT, TalkTalk, Griffin Internet, O2, and Virgin), and provides a service branded under the YOUR VIEW trademark.
  • The YOUR VIEW service allows customers to control spending on telecommunications networks.
  • Powerful rights can be established in trademark registration – provided you get there first.

British TV Channels & Telcos use conflicting brand called “youview”

  • Seven equal shareholders set up a new service as an evolution to “Freeview” called “youview”, and incorporated it into a UK company, YouView TV Ltd.
  • The shareholders included four broadcasters (BBC, Channel 4, Channel 5, and ITV) and 3 telecommunications entities (Arqiva, BT and TalkTalk)
  • Six versions of the “youview” brand were submitted for official trademark registration, of which 4 related to the UK and two related to European trademarks.  The first application was made in 2010. Two applications related to a similar mark, “youview+”.  The judge regarded the shareholders investment as a significant indication of the convergence of phone, telecommunications, data transmission, and data and streaming services.
  • However, Total Ltd. filed a trademark opposition to block trademark registration for certain of the goods/services in the UK.
  • Total used its earlier trademark registration for “YOUR VIEW” to officially oppose parts of the later “youview” trademark applications.  Total was successful in-part at a hearing at the UK Intellectual Property Office.
  • The owners of “youview” decided to appeal this decision to the High Court.  On considering the arguments of the parties, the British High Court declined to support the appeal by YouView TV.

“ youview” continues to be used in trade – how wise is this?

  • Despite the High Court appeal decision, and despite the part-success of the opposition against registration of a trademark for “youview”, YouView TV continued to provide and promote set top boxes to operate the “youview” service, and allow them to be licensed with the “youview” brand.
  • YouView TV spent £70 million on their branded set top boxes and in taking the “youview” programming selection project to the market.
  • The court heard that £29 million in advertising and marketing expenditure was spent from launch until end 2013.
  • Total then sued YouView TV for infringing the rights of its registered trademark, YOUR VIEW.  The roles of communications and databases were among the core issues in the case.  The case was heard by Justice Sales in the High Court, and his decision was recently issued.

Court finds “youview” confusingly similar to YOUR VIEW

Given the similarities in the signs, and similarities in use of the brand name for certain of the goods/services, the judge considered that there would be a strong likelihood of confusion among consumers.  After considering the trademark issues, he felt a consumer presented with a “youview” set top box would think it was entirely plausible that the “youview” goods and services were commercially associated with Total.

Outcome – The Registered trademark, YOUR VIEW wins the case

The High Court judge upheld “youview” could infringe trademark rights to Your View, and Total’s claim of infringement of its registered trademark rights. June 2014.

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