Total Limited v YouView TV Limited

The recent High court ruling in Total Limited v YouView TV limited highlights the convergence of different industries and the importance of protecting ones brand. YouView is an internet TV service which provides TV programs and services through its set top boxes and was initially set up by a joint venture between several television channels and telecoms companies such as BBC, ITV, BT and TalkTalk.

Total is the registered owner of UK trade mark ‘YOUR VIEW’ for goods and services covering ‘databases’, ‘telecommunication services’, ‘compilation of information into a database’, in classes 9, 35 and 38. In 2010, YouView attempted to register the trade mark ‘youview’ but this was successfully opposed by Total. YouView continued using the mark and Total brought this action alleging infringement of its trade mark ‘YOUR VIEW’, with YouView counterclaiming for a declaration of invalidity and for rectification of the Register of Trade Marks.

The case was before Mr Justice Sales who came to the conclusion the marks were confusingly similar and close similarity between the goods and services provided by YouView and those listed under Total’s trade mark. In light of this Mr Justice Sales held that there was a likelihood of confusion on the part of the public. Mr Justice Sales also concluded that ‘Both forms of supply make use of digital databases, telecommunications services and computer programmes giving access to such databases.’.

YouView have indicated that they may appeal the decision but at this stage it looks like they may have to change its name.

The case highlights the changing way technology is being viewed by the courts. YouView provides a TV service, while Total is in the database and telecommunications sector. The sectors have effectively merged and it is becoming more apparent that the lines between these industries are now blurred with organisations offering bundled packages such as telephone, broadband, TV services. With an ever changing technology sector, every organisation should look to ensure its trade marks cover its services and goods that it is currently offering and the relevant trade mark searches are carried out. Prevention is better than a cure and brand owners should continually look to ensure its brand is fully protected. You can view the judgment by clicking here.

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