This case found its way to the High Court after YouView Limited, the venture between BBC, ITV, BT, Channel 4, TalkTalk, Arqiva and Channel 5, of which Lord Alan Sugar is a non-executive chairman, appealed against the decision of the hearing officer at the Intellectual Property Office.
YouView were seeking registration in class 9 “apparatus for television and radio reception” and “software for embedding in apparatus for television and radio reception”. Total Limited, the owners of the “YOUR VIEW” mark, had registered it in class 9 under “database programs and databases”, as well as in classes 35 and 38. The hearing officer concluded that the marks were similar and there was a likelihood of confusion on the part of the public. YouView appealed on the basis that “telecommunications services” and “database programs and databases” had been construed too widely and that she had failed to evaluate certain factors when comparing the marks.
YouView’s trade mark specification included “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”. Total Limited argued that this amounted to a database. YouView’s argument that the definition of a database should be confined to a freestanding database program was rejected by the court, with Mr Justice Floyd saying he saw no reason to limit the definition in such a way. He stated that database software included in a more complex software arrangement “does not lose its character as database software at the point of sale” and that YouView’s submission would only be relevant if the database program was sold as a small part of a larger article.
With regards to the inclusion of “telecommunications services” in the trade mark application, YouView submitted that this ought to have been limited to telephone data and broadband and not services which would fall under the definition of broadcast services, such as television services. Mr Justice Floyd stated it was extremely difficult to accept this when the apparatus for receiving one of those services is also the apparatus for receiving the other and held that “the expression includes a number of areas, increasingly converging, and that without a clear indication one way or the other, includes all of them.”
In relation to the similarity of the marks, the court set out the precedents which establish the principles for evaluating similarity and agreed with the assessment of the hearing officer. In particular, when assessing YouView against YOUR VIEW, she found that “the dominant and distinctive elements of the opponent’s mark to be YOUR VIEW, as a whole similarly, in the application, the dominant and distinctive element is YOUVIEW… The absence of the letter r in the application can easily fall victim to the missing letter effect, which is pertinent to trade mark law in relation to imperfect recollection. The trade marks are highly similar.”
The court went on to dismiss YouView’s appeal.