Mr Justice Sales :
Introduction
- This is the hearing of a claim brought by the Claimant ("Total") alleging infringement of its registered trade mark, the sign "Your View", by the Defendant ("YV"). YV counterclaims for a declaration of invalidity and for rectification of the Register of Trade Marks in respect of the "Your View" mark.
- This is the latest stage in a long-running contest between the parties regarding the use of the sign "youview" by YV in relation to a television programming service offered by it via set top boxes. YV sought to register six versions of the "youview" mark in 2010, but Total successfully opposed that registration at a hearing in the Intellectual Property Office ("IPO") before a Hearing Officer (Ms Pike). Her ruling is dated 30 May 2012.
- YV appealed to this court, but its appeal was dismissed by Floyd J in November 2012: YouView TV Limited v Total Limited [2012] EWHC 3158 (Ch).
- Despite these decisions and its failure to register the "youview" mark, YV continued to offer and promote its "youview" service and set top boxes to the public. Set top boxes produced by a number of manufacturers have capacity to operate the "youview" service and are licensed to be sold with "youview" brand markings on them.
- Total now claims against YV for infringement of its "Your View" trademark arising out of these activities.
The Issues
- The relevant legal framework is that set out in the Trade Marks Act 1994 ("the Act") and Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks ("the Directive"). The Act is to be construed, so far as possible, in conformity with the Directive, on usual Marleasing principles (Case C-106/89 Marleasing SA v La Comercial Internacional de Alimentación SA [1992] 1 CMLR 305).
- The issues requiring determination relate to the validity of Total's trade mark and the alleged infringement of that trade mark:
Validity
i) is the specification of Total's trade mark invalid to any extent on the ground that the goods or services in the specification of the trade mark are not identified with sufficient clarity or precision? This requires consideration of the judgment of the Court of Justice of the European Union (Grand Chamber) in Case C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2013] RPC 11 (commonly known as the IP Translator case).
ii) is the specification of Total's trade mark invalid to any extent on the ground that it is devoid of distinctive character and/or is descriptive (see section 3(1)(b) and (c) of the Act; Article 3(1)(b) and (c) of the Directive)?
iii) Is the specification of Total's trade mark invalid to any extent on the ground that Total's application was made in bad faith (see section 3(6) of the Act; Article 3(2)(d) of the Directive)?
Infringement
iv) Are the goods and/or services in relation to which YV's "youview" sign has been used identical or similar to those specified in Total's trade mark?
v) Is the sign, "youview", in stylised or word form similar to Total's trade mark?
vi) Taking account of the degree of similarity or difference in Issues 4 and 5 and all the relevant circumstances, including the context of the use of the sign, will there be a likelihood of confusion?
vii) Do YV's activities adversely affect the functions of the trade mark?
- Issues relating to remedy, if Total succeeds in its infringement claim, have been postponed by the agreement of the parties to a later hearing, after these issues regarding validity and liability in relation to alleged infringement have been determined.
- Issues 2, 4, 5, 6 and 7 have been the subject of relevant observations in the IPO decision and the judgment of Floyd J upholding Total's objections to the registration of YV's "youview" mark on the Register of Trade Marks. Mr Alexander QC for YV correctly pointed out that, for the purposes of the infringement claim before me, I am not bound by those observations and the rulings in those proceedings and made submissions with the objective of persuading me to come to different views on those issues. He also placed emphasis in his argument on Issue 1 (the IP Translator point) and Issue 3 (the bad faith point), which had not formed any part of the argument in the registration proceedings regarding YV's mark.
The Directive and the Act
- Recital (11) to the Directive explains the general function of registered trade mark protection as follows:
"(11) The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive."
- The Directive includes the following provisions:
"Article 2
Signs of which a trade mark may consist
A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Article 3
Grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;…
2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: …
(d) the application for registration of the trade mark was made in bad faith by the applicant.
Article 4
Further grounds for refusal or invalidity concerning conflicts with earlier rights
1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected;
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark. …
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. …
Article 13
Grounds for refusal or revocation or invalidity relating to only some of the goods or services
Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only."
- The Act contains similar provisions, as set out below. There is no difficulty in this case about reading the Act in conformity with the relevant provisions of the Directive. The Act includes the following:
"1 Trade marks.
(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. …
Grounds for refusal of registration
3 Absolute grounds for refusal of registration
(1) The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, …
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
5 Relative grounds for refusal of registration.
…
(2) A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion of the part of the public, which includes the likelihood of association with the earlier trade mark. …
10 Infringement of registered trade mark.
…
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. …
47 Grounds for invalidity of registration.
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. …
(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. …
72. Registration to be prima facie evidence of validity.
In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it."
The Witnesses
- Total called Ms Lorrin White, its current Operations Director, as a witness of fact. She joined Total in 2002 as an Administration Assistant. She became Head of Operations in 2006 and Director of Operations, with a place on Total's board, in 2008. I found her to be a good and straightforward witness.
- Total also called David Gillies as a technical expert witness to explain and comment on the operation of the "youview" set top boxes and TV programming and play-back services. He had appropriate expertise in relation to these matters and gave his evidence in a balanced and straightforward way, doing his best to assist the court.
- YV called the following as its main witnesses: Susannah Buckridge, Director of Product for YV, who described the background to development of the "youview" service and set top boxes (her evidence was not challenged); David Dorans, the Chief Financial Officer of YV from May 2011, acting in that capacity on secondment from Channel 4; and Christopher Bramley, the Chief Technology Officer of YV from September 2011. Amongst other things, Mr Dorans described the ownership structure of YV, its market positioning and the way its business operates. Mr Bramley gave evidence about the detail of the technology contained in "youview" set top boxes and how those boxes function so as to provide programming information, access to TV programmes and play-back TV. He had direct knowledge of that technology and how it works, and was a suitable witness to give such evidence. In practice, his evidence was relied on by YV in answer to the expert evidence of Mr Gillies. Mr Dorans and Mr Bramley also gave their evidence in a straightforward way.
Factual Background
- Total provides competitive bespoke telecommunications services to individuals and businesses, focusing mainly on provision to businesses. Whilst providing services to businesses, however, Total interacts with individual employees in those businesses. It currently services about 30,000 users of mobile telephones and other devices and about 7,500 fixed line users with multiple extensions.
- There is no doubt that Total's business is a well-established and legitimate one. It developed plans from early 2007 to use "Your View" as a brand name. It applied to register the trade mark "Your View", with a filing date of 18 June 2009. The registration procedure was completed on 20 November 2009. By September 2009, Total had developed a new, fully operational online platform for its "Your View" service and provided and marketed it to customers from that time. This was all done well before it had any idea that YV might be working on developing a service or technology for which it would wish to use the "youview" mark.
- Total buys mobile telecommunications airtime and fixed line capacity on mobile telephone and fixed line networks operated by various providers, which it then uses to package a variety of bespoke telecommunications services to its customers. Its bespoke services are billed to its customers and controlled by them using Total's "Your View" service and its enhanced and upgraded "Your View+" version over the internet (for convenience, I will refer to them both as "Your View"). The telecommunication network providers from whom Total buys in airtime and line capacity include BT, TalkTalk, Griffin Internet, O2 and Virgin.
- Total's "Your View" service allows its customers to manage and control global spending on telecommunications within their undertakings, to monitor and control the usage of company mobile devices (supplied by Total) by company employees and to ensure they are used cost-effectively. The service permits customers to monitor usage and cost very precisely, practically in real time, and enables them to switch networks, tariffs and so on according to their needs and budgets with great flexibility. Under the "Your View" service, customers can arrange such switches by calling Total and arranging for one of their representatives to effect the switch. Using "Your View+", customers are provided with a facility whereby they can effect such switches themselves.
- It is the flexibility and responsiveness of "Your View", by comparison with the standard telecommunications services provided by the network providers and the services of other competing telecommunications businesses, which has been a major factor in the success of Total in attracting customers and maintaining and developing its business. Total continues to be active in looking at ways in which the flexibility and responsiveness of its service can be enhanced, to preserve this competitive advantage.
- Telecommunications and computer technology has developed quickly and continues to do so. Total is looking to develop the service to be offered to its customers to take advantage of these developments, so as to cover an increasingly wide set of telecommunications services in line with what is available in the market, including broadband, hosted applications and cloud services.
- Total's "Your View" trade mark is registered in respect of the following goods and services (using class specifications taken from the Nice classification):
Class 9: Database programs and Databases;
Class 35: Provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database; and
Class 38: Providing access to computer databases; telecommunications services.
- Total chose these class specifications with the benefit of advice from its trade mark attorneys, to meet its legitimate business needs. The specifications chosen are each apt to cover relevant aspects of Total's business. It compiles computerised databases of telecommunications account information, as the foundation of part of its services to its customers; it also provides direct access to account information in the form of databases compiled by the network providers it uses; it uses database programmes to that end and provides access to its services to its customers via such programmes; its database management services are integrated with and form an essential adjunct to the telecommunications services which it provides to its customers.
- Total asked its trade mark attorneys to provide a monitoring service in respect of its trade mark. On about 21 July 2010, Total was informed that an application had been made by a Ms Sarah Eales to register "youview" as a trade mark. It has since emerged that Ms Eales was making the application for the benefit of YV. Total's trade mark attorneys wrote to her to indicate Total's objection to that application.
- The idea for a free TV programming and play-back service, which it was hoped would be called "youview" and which is now promoted by YV, evolved out of a research and development project within the BBC, commenced in about 2008. It was conceived as the next generation of TV service, as an evolution from and eventual replacement for the BBC's existing "Freeview" service.
- "Freeview" provides about 70 digital terrestrial television ("DTT") channels to all UK televisions, following the switch to digital TV. It is limited to providing linear, or real-time, television transmissions. Also, the implementation of the "Freeview" specification by television manufacturers was not uniform, with the result that the look and feel of the electronic programme guide ("EPG") through which users gain access to "Freeview" TV content varies between different TV sets. The BBC's "youview" research project was intended to develop a service which would combine linear and on-demand TV in a readily searchable format using a uniform EPG, to enable consumers to have a wide choice of what to watch and when to watch it.
- The BBC sought partners to help develop this service. YV was incorporated in July 2010, and a shareholders agreement was entered into in September 2010. YV has seven equal shareholders, comprising four broadcasters (the BBC, Channel 4, Channel 5 and ITV) and three communications companies (Arqiva, BT and TalkTalk). The willingness of large communications companies to share in the costs of developing this service is significant. Their investment is an indication of recognition within the telecommunications industry of likely continuing convergence of telephone, telecommunications, data transmission and video and TV streaming services.
- The "youview" service which was developed involves the following technical features:
i) a common core operations function ("CCO") which co-ordinates the user interactions with content providers through a set top box. The CCO includes a Metadata Aggregation System ("MAS") which collates information about programmes, though it stores no TV content. When a user searches for a programme using the EPG, the MAS provides information about the programme sought;
ii) the means to integrate programme delivery via the internet (by means of an internet protocol under which TV content stored in servers operated by broadcasters can be accessed and streamed to the user's set top box and then, after being stored in a temporary digital storage facility in the box, via that box to their TV) and by DTT;
iii) dedicated "youview" platform software installed in the set top box alongside the standard set top box operating software installed by the manufacturer, which allows the user to access the user interface and EPG to choose the programme (picked from either DTT programmes or catch-up TV on demand, supplied by broadcasters via the internet).
- YV has spent about £70 million to bring "youview" branded set top boxes and the "youview" programming service to market. The service was launched on the market in May 2012. Since then, "youview" branded set top boxes have been available for purchase by consumers or via supply by communications companies such as BT as part of a bundle of services. The "youview" on-demand TV service providing DTT and internet-streamed TV programmes to users has been extensively marketed to consumers. The total advertising and marketing spend from launch until the year ending 2013 was over £29 million.
- A large proportion of "youview" set top boxes are provided free to consumers by the communications companies which are shareholders in YV, bundled together with telecommunications services (broadband, mobile and fixed line telephone services) offered by those companies. This again is indicative of the convergence of the areas of provision of TV content and telecommunications services.
- The "youview" technology could be used under a different brand name, but if YV is unable to use the "youview" name it will have to invest to re-establish a position in the market with a new name. For this reason, and because YV is keen to have the marketing advantage of presenting its "youview" service as an evolution from the "Freeview" service with which consumers are familiar, YV wishes to be able to use the "youview" mark.
- It was when the "youview" project was reasonably advanced that in July 2010 YV applied to register "youview" as a trade mark under Ms Eales's name, in relation to the following goods and services:
"Class 09: Data recordings including audio, video, still and moving images and text in compressed and uncompressed form; computer software, including video, still and moving images and data in compressed and uncompressed form; downloadable electronic publications; computer, electronic and video games programmes and equipment; mouse mats; electronic instructional and teaching apparatus and instruments; apparatus for telecommunications, data communications, satellite broadcasting and transmission, television and radio broadcasting, transmission and reception, electronic messaging, access to interactive services and access to the internet; mobile telephone fascias and covers; and parts for all the aforesaid goods.
Class 38: Broadcasting; communications; transmission, broadcast and reception and other dissemination of audio, video, still and moving images, text and data whether in compressed or uncompressed form and whether in real or delayed time; electronic mail services; television screen based information broadcasting and retrieval services; interactive broadcasting services; news information and news agency services; rental of radio and television broadcasting equipment; simultaneous broadcasting, transmission and delivery via the internet, television and radio of audio, video, still and moving images and data whether in compressed or uncompressed form, whether downloadable or non downloadable and whether in real or delayed time; provision of discussion forums; provision of information and advisory services relating to any of the aforesaid services.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design and development of systems for the processing, storage, security, delivery and transmission of data, and research relating thereto; design and development of systems to enable simultaneous broadcasting, transmission and delivery via the internet, television and radio of audio, video, still and moving images and data whether in compressed or uncompressed form, whether downloadable or non downloadable and whether in real or delayed time, and research relating thereto; computer programming; computer consultancy services, installation, maintenance, repair and upgrading of computer software; graphic design services; design, drawing and commissioned writing for the compilation of websites; creating and maintaining websites; hosting the websites of others; provision of information and advisory services relating to any of the aforesaid services."
- Total opposed that application, relying on section 5(2)(b) of the Act (similarity of marks, in relation to goods or services similar to those for which the earlier mark is protected, leading to a likelihood of confusion on the part of the public).
The IPO decision
- At the hearing before the IPO, Total was represented by Mr Malynicz and YV by Mr Abrahams, both of whom appear again before me (Mr Abrahams being led by Mr Alexander QC). By her decision dated 30 May 2012, Ms Pike for the IPO upheld the main grounds of opposition by Total to the registration of "youview" as a trade mark.
- At paras. [8] to [13] of the decision, Ms Pike accurately reviewed and summarised the leading domestic and European authorities relevant to the interpretation of section 5(2)(b) of the Act, as follows:
"9. In comparing the respective specifications, all relevant factors should be considered, as per Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [[1999] RPC 117] where the CJEU stated at paragraph 23 of its judgment:
"In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary."
'Complementary' was defined by the General Court ("GC") in Boston Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T-325/06:
"82 It is true that goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking…".
10. Additionally, the criteria identified in British Sugar Plc v James Robertson & Sons Limited ("Treat") [1996] RPC 281 for assessing similarity between goods and services also include an assessment of the channels of trade of the respective goods or services.
11. If goods or services fall within the ambit of terms within the competing specification, they are considered to be identical, as stated by the General Court ("GC") in Gérard Meric v OHIM, case T-133/05.
12. A great deal of the submissions made at the hearing, in writing and via evidence, focussed on the meanings of terms in the specifications. The significance of classification and the relevance of class numbers were considered by …the courts in Altecnic Ltd's Trade Mark Application (CAREMIX) [2002] RPC 639. In Avnet Incorporated v Isoact Limited [1998] FSR 16 Jacob J held that:
"In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase."
Jacob J also said, in Treat:
"When it comes to construing a word used in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all a trade mark specification is concerned with use in trade".
13. Specifications should not be given an unnaturally narrow meaning, as per Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and Another [2000] FSR 267. In Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2003] RPC 32, although in the context of a non-use issue, the court considered interpretation of specifications:
"In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under section 10(2), adopts the attitude of the average reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark. Thus, the court should inform itself of the nature of trade and then decide how the notional consumer would describe such use"."
- Ms Pike then reviewed the different goods and services for which registration of the "youview" mark was applied for, comparing them with goods and services covered by Total's "Your View" mark. She found that YV's "Data recordings including audio, video, still and moving images and text in compressed and uncompressed form" are identical to Total's "Databases" (para. [15]); YV's "Computer software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data in compressed and uncompressed form" is identical to Total's "Database programs" (para. [16]); there is a good deal of similarity between YV's "Downloadable electronic publications" and Total's "Database programs" (para. [17]); there is a high degree of similarity between YV's "Apparatus for telecommunications, data communications, satellite transmission, television and radio transmission and reception, electronic messaging, access to interactive services and access to the internet" and Total's "telecommunications services", because there is a high degree of complementarity between the service and the apparatus (para. [27]); YV's "Broadcasting; communications; transmission, broadcast and reception and other dissemination of audio, video, still and moving images, text and data [etc]" are identical to Total's "telecommunication services" (para. [34]; in particular, Ms Pike found that broadcasting is identical to "telecommunication services" in view of her findings regarding convergence of technologies set out in para. [30], quoted below); there is a good degree of similarity between YV's "news information and news agency services" and Total's "providing access to computer databases" (para. [35]) and between YV's "technological services and research and design relating thereto", between Total's "database programs" and "telecommunications services" (para. [39]) and between YV's "Design and development of systems to enable simultaneous broadcasting, transmission and delivery via the internet, television and radio of radio, video and still and moving images and data [etc]" and Total's "telecommunications services" (para. [41]); there is high similarity between YV's "Design and development of computer hardware and software; design and development of systems for the processing, storage, security, delivery and transmission of data, and research relating thereto; computer programming; computer consultancy services; installation, maintenance, repair and upgrading of computer software" and Total's "database programs and databases" (para. [42] ); and a reasonable level of similarity between YV's "Hosting the websites of others" and Total's "telecommunications services" (para. [44]). In other respects, Ms Pike found that there was no or only low similarity between the goods and services specified by YV and those specified by Total.
- At paras. [29] to [31] Ms Pike reviewed YV's claim in relation to "Apparatus for satellite broadcasting, television and radio broadcasting." She found that there was no or only very low similarity between that apparatus and Total's "telecommunications services" protected by the "Your View" trade mark. But she made these observations at para. [30] regarding the convergence of technology between broadcasting and telecommunications:
"30. I repeat here that Ofcom's definition of telecommunication is "[c]onveyance over distance of speech, music and other sounds, visual images or signals by electric, magnetic or electro-magnetic means". The Penguin Dictionary [2003 edition] defines telecommunication as "communication over distance by telegraph, telephone, television etc" and the 2010 edition of the Oxford Dictionary of English defines it as "communication over a distance by cable, telegraph, telephone, or broadcasting". This is a good deal wider than Mr Abraham's interpretation, which he limited to telephone network providers. Mr Malynicz submitted that broadcasting is a subset of telecommunications and that there must therefore be identity. I think the average consumer's perception of where the differences between broadcasting and telecommunications lie is likely to be more blurred than the applicant's view. The convergence of technology has caused market providers to bundle together their internet, phone and television broadcasting services so that there are shared channels of trade. Broadcasting, as perceived by the average consumer, is the transmission of radio or television programs achieved via a more diverse range of media than simply antennae, such as cable and the internet and e.g. the streaming of catch-up programmes: this is telecommunication. The purpose of both is to convey over distance sounds and images. Transmitting TV and radio to a set top box on a cable system, for example, requires telecommunications apparatus and the service which goes with it: these are complementary. So broadcasting apparatus will be used by broadcasting undertakings which also supply telecommunication services, such as Sky and Virgin Media. I find that I agree with Mr Malynicz: broadcasting is a subset (he called it the "inclusion identity principle") of telecommunications."
- At para. [46], Ms Pike said this about the average consumer and the purchasing process:
"46. The average consumer is reasonably well informed and reasonably circumspect and observant, but his level of attention is likely to vary according to the category of goods or services. For both parties, the average consumer for some goods and services will be the general public (e.g. electronic and video games programmes and equipment, database programs and telecommunications). For other goods and services, it will be business professionals (e.g. provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database) and, particularly in relation to the applicant, certain of its goods and services will be purchased by professionals, such as design and development of systems for the processing, storage, security, delivery and transmission of data, and research relating thereto; design and development of systems to enable simultaneous broadcasting, transmission and delivery via the internet, television and radio of audio/video data."
- At paras. [47] to [49], Ms Pike compared the two marks, by reference to the perception of the average customer. Her view was that "The trade marks are clearly orally highly similar and conceptually similar". She observed that the absence of the letter "r" in YV's mark "can easily fall victim to the missing letter effect" - an observation with which I wholeheartedly agree: my personal experience when reading to prepare for the hearing was that I frequently had to read the different marks as they appeared in the documents twice to make sure which one was being referred to, because it was so easy to mix them up. She found the trade marks to be highly similar.
- At paras. [50] to [53], Ms Pike addressed the distinctiveness of the Total's mark and the likelihood of confusion, as follows:
"Distinctiveness of the earlier mark
50. It is necessary to consider the distinctive character of the opponent's mark because the more distinctive it is, either by inherent nature or by use (nurture) the greater the likelihood of confusion [Sabel BV v Puma AG [1998] RPC 199]. The distinctive character of a trade mark must be assessed by reference to the goods or services in respect of which registration is sought and by reference to the way it is perceived by the relevant public [Rewe Zentral AG v OHIM (LITE) [2002] ETMR 91]. The opponent has not filed evidence of use of its mark, so there is no question of whether it is entitled to an enhanced degree of distinctive character gained through use. The assessment to be made is the degree of inherent distinctive character. YOUR VIEW is a view which belongs to the second person (singular or plural). I consider the mark to have an average level of distinctive character; it does not describe the opponent's goods and services, but neither is it invented.
Likelihood of confusion
51. In deciding whether there is likelihood of confusion between the marks, I must weigh the various factors I have identified. This includes keeping in mind the whole mark comparison and the principle of interdependency, whereby a lesser degree of similarity between the services may be offset by a greater degree of similarity between the trade marks, and vice versa (Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.[[1999] RPC 117]).
52. Similarity between marks cannot, however, compensate for absence of similarity between goods, goods and services or between services. Consequently, where there is no similarity between the parties' goods and services, there is no likelihood of confusion. Where the goods/services are similar only to a very low degree, these are goods and services to which the average consumer will pay a relatively close amount of attention. Even though there is, overall, a high degree of similarity between the marks and, even allowing for the fact that a visual perception plays the most important part in the purchasing process, the higher level of attention and the lower levels of similarity between the goods and services, coupled with the differences between the marks, will offset a likelihood of confusion. Consequently, in relation to the following goods and services, there is no likelihood of confusion and the opposition fails: … [the relevant goods and services were set out]
53. In relation to the other goods and services, all of which I have assessed at ranging between identical to a reasonable level of similarity, there is a likelihood of confusion. The visual perception of the marks during the purchasing process carries more weight than the aural perception. Although the degree of conceptual similarity is no more than average, there is a high degree of visual similarity. Lack of conceptual similarity can offset a high degree of visual and/or aural similarity [Ruiz-Picasso v OHIM, case 361/04 P [2006] ETMR 29], but this is not a rule of thumb [As per the GC in Nokia Oyj v OHIM Case T-460/07: "Furthermore, it must be recalled that, in this case, although there is a real conceptual difference between the signs, it cannot be regarded as making it possible to neutralise the visual and aural similarities previously established (see, to that effect Case C-16/06 P Éditions Albert René [2008] ECR-I-0000, paragraph 98)"] and here there is at least an average degree of conceptual similarity between the marks. Even allowing for a high level of purchasing attention, I consider that there will be a likelihood of confusion between YOUR VIEW and YOUVIEW for those goods and service which are identical, highly similar or similar to a good degree. Consequently, the opposition succeeds in relation to: … [the relevant goods and services were set out]"
- The outcome of Total's opposition to YV's application, therefore, was that the IPO partially refused YV's application. Ms Pike summarised the outcome as involving a measure of success of roughly 2:1 in favour of Total (para. [57]). YV appealed.
The judgment of Floyd J: YouView TV Limited v Total Limited [2012] EWHC 3158 (Ch)
- The appeal was concerned with more limited claims by YV, to be allowed registration in class 9 for (a) "Apparatus for television and radio reception" (which had been refused by the IPO) and (b) "Software for embedding in apparatus for television and radio reception" (which was a new formulation advanced for the first time on the appeal). Total's mark had been registered for less than five years at the date of publication of the application for the opposed mark, so it was common ground that Total's opposition should be assessed on the basis of notional and fair use of its mark across the breadth of the goods and services for which it was registered (para. [7]). Floyd J (as he then was) said that the IPO hearing officer "conducted a meticulous and exhaustive comparison" of the rival goods and services and the rival marks, and noted the narrow scope of the appeal (para. [8]). I agree with these remarks. Ms Pike's decision is balanced and thorough.
- Floyd J held that it is necessary to focus on the core of what is described, without straining the natural meaning of the language used to produce either an excessively liberal interpretation with excessively fuzzy and imprecise limits or an unnaturally narrow interpretation designed to avoid coverage; where words or phrases in their ordinary and natural meaning are apt to cover the category of goods (or services) in question, effect should be given to them (paras. [11]-[12], in which he specifically referred to the judgment in IP Translator). He adopted the same approach to comparison of goods and services as had Ms Pike (para. [10]) and the same approach to the question of likelihood of confusion (para. [30]).
- As to category (a), Floyd J upheld the IPO's decision that the relevant goods and services were highly similar. He rejected the submission for YV that Ms Pike had adopted too wide a definition of "telecommunications services" (as covered by Total's mark), going beyond its core meaning: paras. [22]-[29]. Like Ms Pike, he emphasised that the fields of telecommunications and broadcasting were converging in remarks at [26]-[28], as follows:
"26. I think that once one has, as one does, a situation in which the same piece of apparatus, be it a smart phone or a computer, which is capable of receiving both telephone calls and television programs, it becomes extremely difficult to maintain the distinction for which Mr Alexander [for YV] contends. Even supposing he is right and one should construe "telecommunication services" as excluding the reception of television programs, and as being limited to telephony and broadband, it remains the case that an apparatus for receiving one is an apparatus for receiving the other. That, as it seems to me, is enough to show that there is a very close similarity between telecommunication services and apparatus for television and radio reception.
27. Mr Malynicz [for Total] pointed to the Nice Classification, Ninth Edition. He did so not in order to construe what "telecommunications services" meant in his clients' specification, recognising that would be impermissible. Instead he drew attention to the explanatory note to show that as a matter of language, telecommunications could include both telephony, data message transmission and radio and television. To that extent, it merely confirms what one can find in a number of dictionaries. So, for example, the New Shorter Oxford Dictionary (1993) says that it means "Communication over a distance, esp. by cable, telegraph, telephone or broadcasting".
28. I have difficulty with the suggestion that telecommunications services should be given a narrow meaning which excludes broadcasting. Mr Malynicz did not seriously challenge the suggestion that in some contexts the term may have a more restricted meaning. The fact remains that, on its face, the expression includes a number of areas, increasingly converging, and that without a clear indication one way or the other, includes all of them."
- As regards category (b), Floyd J approved the width of the concept of "Databases" employed by Ms Pike in para. [15] of her decision and upheld Total's opposition to registration of YV's mark for this category. At [19]-[21] he said this:
"19. So Mr Alexander says that the hearing officer construed the terms "databases" and "database programs" too widely. Not everything which has data is a database, and not everything which organises data is a database program. He took the example of a car which had the facility to store data about preferred seat positions for a variety of drivers. That did not make the car a database. He submitted that the core meaning of a database program was something like Oracle: a freestanding database program for producing freestanding databases.
20. Mr Malynicz submitted that it is notable that the proposed specification is not limited to software which performs the function of television or radio reception. The specification merely limits the specification of goods to software of the kind embedded (for embedding) in particular apparatus. Notional fair use of the appellants' mark with this specification would include selling database programs for embedding in apparatus for television and radio reception. That is not a fanciful suggestion, as a critical part of an electronic programming guide for a television is a database. This latter point was demonstrated by materials produced for the first time on this appeal, and to which Mr Alexander did not object.
21. I have no doubt that Mr Malynicz is right. I reject Mr Alexander's submission that one should construe database and database programs to "freestanding" ones. I see no reason to limit it in this way. If database software is being sold for inclusion in a more complex software arrangement, it does not lose its character as database software at the point of sale. Once one appreciates that the specification of the opposed mark includes within its scope the notional activity of selling or supplying software for organising the data held in the database of a television or radio receiver, I believe that the question answers itself. Mr Alexander's analogy with the car would only be relevant at all if the specification was limited so as to restrict it to goods where the database program was necessarily sold as a small part of a larger article. The specification in issue here does not have that effect."
- Floyd J dismissed YV's appeal in relation to the IPO decision regarding the similarity of the marks: paras. [30]-[35]. He observed that "The hearing officer was engaged in a multifactorial assessment which her expertise ideally qualified her to undertake": para. [35].
- Notwithstanding its lack of success before the IPO and Floyd J, YV decided to press on with marketing its new service with the "youview" brand and licensing production and marketing of set top boxes using that brand.
Discussion
Issue 1: IP Translator
- YV relies on IP Translator in support of its claim that Total's "Your View" trade mark should be found to be invalid, particularly in relation to the specification of "databases" in each of class 9 and class 35 and also in relation to the specification of "telecommunications services" in class 38, especially if it is to be given the wider meaning for which Total contends.
- In IP Translator the CJEU held that it is implied within the Directive that excessive uncertainty in the specification of goods and services to be covered by a trade mark is a basis on which registration of a trade mark should be refused. Such uncertainty would leave potential competitors unclear what activities they could and could not embark upon, and would produce an unfair anti-competitive "chill" effect in relation to their activities. The CJEU also held that it could not simply be assumed that specification of goods and services using the terminology employed in the Nice classification categories would be sufficiently certain to meet the implied standard.
- Mr Malynicz makes two submissions on Issue 1. First, he submits that it is clear, to the acte clair standard, that lack of clarity or precision in the goods or services specified for a trade mark is not a ground of invalidity of a trade mark, once registered (as Total's trade mark has been); he says that IP Translator shows that it is only a ground for objection to registration of a trade mark. In this regard, he relies on obiter observations by Arnold J in Stichting BDO v BDO Unibank Inc. [2013] EWHC 418 (Ch); [2013] FSR 35 at [38]-[49] regarding the materially identical provisions of the EU Trade Mark Regulation, to the effect that in his view it is clear that lack of clarity and precision in the specification of goods and services specified for a trade mark is an objection only to registration of the mark, and cannot be relied on in a claim for a declaration of invalidity once registration has taken place. Against this, Mr Alexander contends that the position on this point is not acte clair in favour of Total, and he accepts that it is not acte clair in favour of YV either; therefore, he says, the court should make a reference to the CJEU under Article 267 TFEU.
- Secondly, Mr Malynicz submits that even if IP Translator implies that lack of clarity in the specification of the goods or services may be relied upon as a ground of invalidity under the Directive, the specification relied on by Total for the "Your View" mark is sufficiently certain to comply with the standard implied in the Directive. Mr Alexander, on the other hand, contends that it is not, or at least that a reference to the CJEU is required on this point as well.
- I reject Mr Malynicz's first submission, but accept the second. In relation to the second, I do not consider that a reference to the CJEU is required or appropriate.
- I do not agree with Mr Malynicz's claim that it is acte clair in light of IP Translator that the implied requirement in the Directive of reasonable clarity in the specification of the goods or services applies only at the stage of application for registration of a trade mark, and cannot be invoked later in the context of an invalidity challenge. Arnold J in Stichting BDO did not have to consider whether, and did not hold that, the point was acte clair in favour of this view. Moreover, it is, I think, fair to say that I do not find the matters referred to by him as factors in favour of this interpretation of the Directive and IP Translator as powerful as he did. It is sufficient for the purposes of this judgment for me to explain relatively briefly why I consider that it is well arguable that the implied requirement of reasonable clarity in the relevant specification identified by the CJEU in IP Translator applies both in relation to original registration of a trade mark by the national registration authority (here, the IPO) and in relation to a later claim by a competitor or opponent that it is invalid.
- IP Translator was a judgment on a reference from a national court in relation to the proper approach to be adopted by a national registration authority dealing with an application to register a trade mark. The CJEU set out its reasoning in support of finding that the Directive impliedly required reasonable clarity in the specification of the goods or services in respect of the proposed trade mark at paras. [38] to [49], as follows:
"The requirements of clarity and precision for identifying goods and services
38 As a preliminary point it must be observed that there is no provision of Directive 2008/95 which directly governs the question of the identification of the goods and services concerned.
39 However, that observation is not sufficient to support a finding that the determination of goods and services for the purposes of registration of a national trade mark is a matter which does not fall within the scope of Directive 2008/95.
40 Although it is apparent from recital 6 of the preamble to Directive 2008/95 that the Member States remain free to fix the provisions of procedure concerning, inter alia, the registration of trade marks (see, to that effect, Case C-418/02 Praktiker Bau- und Heimwerkermärkte [2005] ECR I-5873, paragraph 30, and Case C-246/05 Häupl [2007] ECR I-4673, paragraph 26), the fact remains that the Court has held that determination of the nature and content of the goods and services eligible for protection by a registered trade mark is subject, not to the provisions on registration procedures, but to the substantive conditions for acquiring the right conferred by the trade mark (Praktiker Bau- und Heimwerkermärkte, paragraph 31).
41 In that regard, recital 8 of the preamble to Directive 2008/95 emphasises that attainment of the objectives at which the approximation of the laws of the Member States is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States (see, to that effect Siekmann [Case C-273/00 Sieckmann v Deutsches Patent und Markenamt [2002] ECR I-11737; [2003] Ch 487], paragraph 36; Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 122; and Case C-482/09 Budejovický Budvar [2011] ECR I-0000, paragraph 31).
42 As regards the requirement of clarity and precision for the identification of the goods and services covered by an application to register a sign as a trade mark, it must be held that the application of certain provisions of Directive 2008/95 depends to a great extent on whether the goods or services covered by a registered trade mark are indicated with sufficient clarity and precision.
43 In particular, the question of whether or not any of the grounds for refusal or invalidity set out in Article 3 of the Directive apply to the mark must be assessed specifically by reference to the goods or services in respect of which registration is sought (see Koninklijke KPN Nederland, paragraph 33, and Case C-239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 31).
44 Similarly, further grounds for refusal or invalidity concerning conflicts with earlier rights provided for by Article 4(1) of the directive presuppose the identity or similarity of the goods or services designated by the two conflicting marks.
45 Moreover, the Court has held that, although it is not necessary to specify in detail the service(s) for which registration is sought, since, to identify those services, it is sufficient to use general wording, the applicant must conversely be required to specify the goods or types of goods to which those services relate by means, for example, of other more specific details. Such details will make it easier to apply the articles of Directive 2008/95 referred to in the previous paragraphs, without appreciably limiting the protection afforded to the trade mark (see, by analogy, Praktiker Bau- und Heimwerkermärkte, paragraphs 49 to 51).
46 In that connection, it must be recalled that the entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators (Sieckmann, paragraph 49, and Case C-49/02 Heidelberger Bauchemie, ECR I-6129, paragraph 28).
47 On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks (see, by analogy, Sieckmann, paragraph 50, and Heidelberger Bauchemie, paragraph 29).
48 On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties (Sieckmann, paragraph 51, and Heidelberger Bauchemie, paragraph 30).
49 Accordingly, Directive 2008/95 requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought."
- In my view, even though the case itself was concerned with the issue of clarity of specification at the stage of application to the national authority for registration of a mark, it is well arguable that the reasoning of the CJEU extends to a case where a trade mark has been registered by the national authority but a competitor seeks a court declaration that it is invalid:
i) The CJEU's references to "the substantive conditions for acquiring the right conferred by the trade mark" (para. [40]) and to the Directive's requirement that "the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States" (para. [41]) arguably indicate that the Court intended to refer to substantive conditions of validity for a registered trade mark which can be invoked as standards to test that validity at any stage, whether at the time of application for registration or in a subsequent claim of invalidity;
ii) The scheme of the Directive seems to me to support such a view. Articles 3 and 4 deal with grounds for refusal and invalidity together, and set out express conditions which need to be satisfied for a mark to be valid which can be invoked both at the initial registration stage and in a subsequent invalidity challenge. Although the CJEU does not specify where exactly in the text of the Directive words should be implied to give effect to the implied condition of clarity in specification which it identified, it is arguable that the natural place for such implication is as an implied condition in Article 2 (particularly in view of the analogy drawn by the CJEU with its judgment in Sieckmann: see sub-para (iii) below; and Article 3(1)(a) refers back to Article 2) and/or alongside the express conditions in Articles 3 and 4 and that its effect is the same as for those express conditions (i.e. so that it can be invoked both at the registration stage and in a subsequent invalidity challenge). It is noticeable that the CJEU itself in paras. 43-45 refers to these provisions and the fact that they provide grounds for refusal or invalidity;
iii) Further to point (ii) above, it appears from the CJEU's reasoning that it placed considerable weight on the analogy to be drawn with its judgment in Sieckmann, in which it held that the registered sign (as distinct from the specification of the goods and services to which a mark relates) must be identified with clarity and precision. It is established that a mark can be declared invalid after registration if the sign is not represented with sufficient clarity and precision: see JW Spear & Sons Ltd v Zynga Inc [2012] EWHC 3345 (Ch); [2013] FSR 28 at [10]-[27] per Arnold J; [2013] EWCA Civ 1175; [2014] FSR 14. Since similar requirements of clarity and precision are said to apply to the sign and the specification for the same reasons, it is arguable, as Mr Alexander submits, that the consequences should also be the same, so that lack of clarity and precision in the specification is likewise a ground of invalidity;
iv) Paras. [48] and [49] of the judgment in IP Translator refer to the important objective of the regime in the Directive that economic operators, in particular competitors, should know what the rights of the trade mark holder are. This is so that they can know what activities they can engage in without infringing those rights. It is not hard to imagine a case in which the national registration authority has allowed registration of a trade mark without hearing representations in opposition from a competitor or potential competitor (who may simply have been unaware that an application for registration had been made or unaware how widely the applicant for registration would later say the class of goods or services to which it relates should be interpreted), where that person then wishes to challenge the registered mark when threatened with infringement proceedings. In such circumstances, I find it difficult to see what fair or good grounds there might be, having regard to the scheme of the Directive, to suppose that the competitor should be deprived of the opportunity of challenging the validity of the registration by reference to the clarity standard implied by the CJEU in IP Translator – a standard implied in large part in order to safeguard the rights and interests of such a competitor. The national regulator may simply have made a mistake which ought to be corrected by a court of law, acting with the benefit of submissions and evidence from the competitor in the course of an invalidity challenge. It is arguable that the more natural inference from the judgment is that it is indeed possible for a competitor to invoke the relevant clarity standard as a basis for claiming that the registration should be invalidated. (And in this regard, it is arguable that the scheme and language of the Directive is materially different from that of the European Patent Convention, to which Arnold J referred in Stichting BDO at [48]).
- On the footing that I reject Mr Malynicz's first submission, Mr Alexander said that a reference to the CJEU would be necessary. I do not agree. Even if lack of clarity and precision in the specification of the goods and services to which a mark relates can be a ground of invalidity (as, in my view, is arguably the case), I do not consider that there is any relevant lack of clarity or precision in the specification of the goods and services to which Total's "Your View" trademark relates. Therefore, since the outcome of these proceedings does not depend upon resolution of that arguable point of EU law, on ordinary CILFIT principles (Case 283/81, CILFIT Srl [1982] ECR 3415) it is not necessary or appropriate to postpone decision in these proceedings in order to make a reference to the CJEU. The question whether there is on the facts of a particular case a lack of clarity and precision in the specification of the goods and services to the degree that registration should be refused (or, if the Directive allows for an invalidity challenge on this basis, should be invalidated) will usually be a matter for the domestic courts of Member States, having regard to the specific facts of the cases before them and applying the guidance given by the CJEU in IP Translator. In my view, there is nothing in the circumstances of the present case which takes it outside that usual position. A reference to the CJEU is not required to resolve such questions of application of the law.
- In applying the guidance given in IP Translator to the particular facts of the present case, I consider that there is no material lack of clarity and precision in the specification of the classes of goods and services given by Total in respect of its "Your View" trade mark. It is to be expected (indeed, is practically inevitable) that most if not all specifications of goods and services will have some element of uncertainty at their margins, since one is using concepts expressed in short words or formulations to apply to fields of often complex and variable activities. This is a familiar and entirely general problem relating to the operation of legal concepts, not just in the area of trade mark law - compare, for instance, the standards applied by the European Court of Human Rights in relation to specification of criminal offences, where the interest of an individual in knowing with reasonable precision what they may or may not do is significantly stronger than in the present context: see SW v United Kingdom (1995) 21 EHRR 363, at para. 36: "However clearly drafted a legal provision may be, in any system of law, including criminal law, there is an inevitable element of judicial interpretation. There will always be a need for elucidation of doubtful points and for adaptation to changing circumstances …"; and in the trade marks context see Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] RPC 40, at [44], where Jacob LJ referred to "the inherent difficulty in specifying services with precision" as one reason why an approach focusing on the core of what is described in the specification is the appropriate one (for that approach, see Jacob LJ at [43], referring to his own previous judgment in Avnet Inc v Isoact Ltd [1998] FSR 16, at 19; and see also paras. [11]-[12] in the judgment of Floyd J, who treated this approach as one supported by the judgment in IP Translator at paras. [47]-[49]). The CJEU in IP Translator clearly did not mean that any degree of uncertainty of application of a word or phrase in a classification relating to a mark would mean that registration for that trade mark would be refused. The issue is whether there is such lack of clarity and precision in the specification given as to create an unacceptable or unreasonable level of uncertainty regarding the scope of protection given by the trade mark, having regard to the context in which it is to operate.
- There is nothing in the judgment in IP Translator to indicate that the approach adopted by Floyd J at paras. [11]-[12] of his judgment, focusing on the core of what is described and the ordinary and natural meaning of the words or phrases used, is anything other than correct (and clearly so). On the authorities, this approach is a well established. I propose to follow the same approach.
- Doing so, it is my view that although there may be some element of uncertainty at the margins about whether something is a computer database, or a database program, or a telecommunications service, there is no significant doubt about the core meaning of those terms and no unacceptable uncertainty regarding their scope of application. Indeed, it is difficult to think of alternative, more precise and acceptable terms or formulations which would fulfil the legitimate objects of a person in the position of Total seeking to register a trade mark in accordance with the Directive.
- I see no unreasonable or unacceptable uncertainty in the concepts used for the purposes of defining the categories of goods and services covered by Total's trade mark. Ms Pike and Floyd J experienced no particular difficulty in interpreting and applying them. Similarly, I see no great difficulty in understanding the core and natural meaning of the words used, and nor in my view would "economic operators" (to use the language of the CJEU in IP Translator). A fair working definition of a database is that relied on by Mr Malynicz: an organised collection of information treated as a unit. Even if there may be marginal cases (such as in the example deployed by Mr Alexander of a car which has the facility to store data about preferred seat positions for a variety of drivers), they are of a character which courts, regulators and economic operators are used to dealing with when applying legal rules and standards in the ordinary course of day to day business and are well within the scope of acceptable toleration of uncertainty inherent in the standard laid down by the CJEU in IP Translator. A good deal is likely to depend on the commercial context in which a particular term is used. One might think that the information programmed into a car seat would not readily be regarded as falling within the core meaning of the term "database" where the trade is one of selling cars to ordinary consumers, since it would be a peripheral and (in context) insignificant part of the thing being sold; whereas for a company which sells pre-programmed computerised data-boxes to car manufacturers for installation in car seats, the thing being sold would fall within the core meaning of the term "database".
- I also agree with Mr Malynicz that the term "telecommunications services" has a broad meaning, which includes services such as digital audio visual streaming via broadband connections or mobile or fixed line telephone networks of audio visual TV content to mobile telephones and other devices, including to set top boxes.
- I find it natural, for example, to describe the data stored on Total's servers or on the servers of telecommunications network providers to which Total's customers are given access as databases; to describe the data about TV programmes stored in the "youview" set top boxes in the MAS and the EPG as databases; to describe the data consisting of digital TV content stored on the servers of the TV broadcasting companies to which the "youview" service gives access as databases; and to describe the provision by Total to its customers of services to gain access to their account information and to control the communications services they use as providing access to computer databases and as telecommunications services.
- In support of his submission that there is no unacceptable uncertainty in the specification of the goods and services given by Total in respect of its "Your View" trade mark, as drawn from classes 9, 35 and 38 of the Nice classification, Mr Malynicz drew my attention to work which has been done by the IPO in conjunction with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ("OHIM") and the national trade mark offices of other EU Member States in light of the IP Translator judgment, to provide guidance for the approach to be adopted to specification of goods and services for trade mark registration under the principles laid down in that judgment. This convergence work is described in Practice Amendment Notice PAN 03/13 issued by the IPO. The Notice notes that the CJEU in IP Translator did not preclude the use of all Nice classification terms in the specification of goods and services, but only indicated that some would be too vague as to be unacceptable. The Notice sets out the Nice classification terms which OHIM, national regulators and user organisations agreed would be unacceptable under the principles in IP Translator. They do not include terms in classes 9, 35 and 38, from which Total had drawn its specification terms. There is also no indication in the IP Translator judgment itself to suggest that terms in these classes (and, in particular, the terms used by Total in its specification) would be unacceptably lacking in clarity and precision. This all supports the conclusion at which I have arrived in this case.
- For these reasons, I find that the validity challenge to Total's "Your View" registered trade mark under Issue (1) fails and that no reference to the CJEU is required.
Issue 2: is Total's trade mark devoid of distinctive character and/or descriptive?
- I refer to section 3(1)(b) and (c) of the Act and to Article 3(1)(b) and (c) of the Directive, set out above. In my judgment, the answer to these questions is "No".
- The threshold to be satisfied by Total in relation to its mark under these provisions is a comparatively low one. It only has to show that its mark is not "devoid of any distinctive character" (Article 3(1)(b); section 3(1)(b)) and that it does not consist "exclusively" of the sort of descriptive matters referred to in Article 3(1)(c) and section 3(1)(c).
- Mr Alexander referred me to the helpful summary of relevant authorities in Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch); [2013] FSR 29, [90]-[95] per Arnold J. He also relied, in particular, on the judgment in Case C-191/01 P OHIM v WM Wrigley JR Company [2003] ECR I-12447 (the Doublemint case), at paras. [28]-[37].
- The IPO has, of course, registered Total's trade mark in 2009 and was clearly then of the view that it had sufficient distinctive character and that it was not purely descriptive. Ms Pike's view (para. [50] of her decision in relation to YV's later application to register its mark) was that Total's trade mark is distinctive, with an average level of distinctive character. She found it to be distinctive from YV's "youview" mark at paras. [48]-[49], in reasoning upheld by Floyd J on appeal. Floyd J did not express any doubt about the distinctive character of Total's mark, nor did he suggest that it might be regarded simply as descriptive.
- Similarly, I consider that the "Your View" mark is distinctive to a proper degree meriting protection according to the standards given by these provisions in the Act and the Directive and that it cannot be regarded as consisting exclusively of relevant descriptive matters. In the context in which the mark is used, it is not purely descriptive. The phrase, "your view", is typically used in normal language to refer to a person's opinion or particular visual perspective; but in the context of use of the mark, it is employed to describe an interactive and responsive telecommunications service to meet customers' telecommunications needs. The viewing of the data is only one necessary, but essentially subsidiary element in the provision of that service. In that context, in my view, the phrase would clearly be taken by consumers (the companies which buy Total's services, the employees in those companies who make use of the services and the wider public who become aware of those services) to refer distinctly to the provider of the service, and not as a description of the service. It is thus capable of fulfilling, and in this case is appropriate to fulfil, "the indication-of-origin function" of a registered trademark: see Doublemint at para. [30].
Issue 3: application in bad faith
- I reject this attack on the validity of Total's registered trade mark.
- When Total applied to register its trade mark, by virtue of section 32(3) of the Act it had to include in its application form a declaration that "the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used." There is no requirement set out in the Directive to make such a declaration, which is an idiosyncratic feature of the United Kingdom regime. There might be scope for argument in another case whether the requirement in section 32(3) for such a declaration is compatible with the Directive, or should be disapplied; but it is not necessary to examine that issue in this case. If a false declaration were knowingly made to this effect in the application form, that would be capable of being regarded as evidence of bad faith for the purposes of the Directive and the Act.
- I am satisfied by Ms White's evidence that Total applied for its trade mark for its own entirely legitimate business purposes. There is no basis on which it could be suggested that Total applied in order to obtain registration of a mark which could then be used oppressively against YV, to block YV's business plans or to extract some sort of ransom payment from YV (cf Case C-529/07 Chocoladenfabriken Lindt & Sprungli AG v Franz Hauswirth GmbH [2009] ECR I-4893, [2009] ETMR 56, paras. [43]-[45]; Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch); [2013] ETMT 53, [130]-[138] and [158]). When it applied for registration of its mark in June 2009, Total had no inkling that YV might be doing something for which it would wish to use "youview" as a brand name or mark.
- Total intended to provide services under the mark within each of the specifications of goods and services for which it sought registration of the mark. It intended to use the trade mark in the market for which protection was sought: see Case C-569/08 Internetportal und Marketing GmbH v Schlicht [2010] ECR I-4871, paras. [45]-[48] and [77]. Total fully intended that the "Your View" mark would be used to indicate the origin of Total's services, which is the essential function of a registered trade mark: cf Red Bull at [158]. This is not a case in which a type of goods or services is specified where there is no intention on the part of the applicant to make any use at all of the mark in relation to that type of good or service. In that respect, it is to be contrasted with a case like DEMON ALE Trade Mark [2000] RPC 345, in which the applicant applied to register the trade mark for beer, but admitted that he had no intention of selling beer and was therefore found to infringe the good faith requirement in section 3(6) of the Act. Unlike in that case, Total had a legitimate business interest of a kind recognised by the Directive and the Act which it wished to protect by means of applying to register its trade mark. It cannot be said that any part of Total's application was directed to sterilising usage of identical or similar marks in relation to some area of activity or good or service in relation to which Total had no legitimate interest of its own to promote. It cannot begin to be said that Total engaged in dishonest behaviour; nor can it begin to be said that its actions "fall short of the standards of acceptable behaviour observed by reasonable and experienced men in the particular area being examined" (see Red Bull at [134]).
- As developed by Mr Alexander, the main focus of YV's case to attack Total's registered trade mark on the basis that the application for registration was made in bad faith by Total, within the meaning of Article 3(2)(d) of the Directive and section 3(6) of the Act, was on the extent of the areas within which Total intended to put its trade mark to use. He submitted that Total applied for registration of a trade mark which it appreciated would not be used by it across the whole scope of the categories of application designated by it and that this constituted bad faith for the purposes of the Directive and the Act.
- In her evidence, Ms White accepted that in June 2009 Total had no positive intention to use its trade mark for the purpose of broadcasting TV content, providing access to databases of TV content or similar activities. However, she also made it clear that Total had not taken any kind of decision to exclude moving into these fields and using its trade mark in relation to them, should opportunity arise. In the context of fields of activity which were in the process of significant change and convergence in 2009, this struck me as truthful and credible evidence. In my view, Total adopted a legitimate and sensible commercial position in registering its trade mark in the way it did. It was very far from acting in bad faith, as that concept is used in the Directive and the Act. Part of the value of a trade mark is the protection it provides for an economic operator where the market is developing and it may wish to expand its business into related areas as opportunities arise in future, as well as providing protection against economic operators in related areas deciding to expand their activities into the area in which the trade mark holder is established. Indeed, where areas are converging, as here, it may become increasingly difficult to distinguish between these aspects of protection. The trade mark holder may need to expand its activities into related areas in order to remain competitive in its offering to consumers within its original area of activity. The specification of goods and services adopted by Total was fully in line with the objective of fair protection inherent in the Directive and the Act. I am satisfied that the declaration made by Total in its application form was made in complete good faith.
- I accept Mr Malynicz's submission that there is no requirement under the Directive and the Act that a person applying to register a trade mark should have a positive intention at the time of application to use that mark across the whole range of activities covered by the specification of goods and services which it applies for. For example, a luxury clothing manufacturer may legitimately use the specification, "clothing", even if at the time of application it has no positive intention to use its trade mark in relation to manufacture and sale of sportswear clothing goods. The specification which it asks for is properly related to the area in which it proposes to use the trade mark and allows legitimate commercial flexibility for future adaptation by the manufacturer to the market and competitive environment in the general area covered by the "clothing" specification. This is the position in relation to Total's application in respect of its "Your View" trade mark.
- In relation to this Issue, Mr Alexander again pressed for a reference to the CJEU under Article 267 TFEU. In my judgment, however, there is again no relevant issue of EU law which requires clarification or a ruling by the CJEU to enable the domestic court to decide the case properly in accordance EU law in the particular circumstances of this case. I therefore decline to make a reference in relation to Issue 3.
Issue 4: are the goods and/or services in relation to which YV's "youview" sign has been used identical or similar to those specified in respect of Total's trade mark?
- In my judgment, the answer to this question is "Yes". YV's activities involve the supply of goods and services which are identical with or similar to those specified in respect of Total's trade mark.
- The principles to be applied in assessing similarity of goods and services are those identified by Ms Pike and Floyd J. A broad evaluative judgment is called for: see, in particular, Canon Kabushiki Kaisha v Metro-Goldwyn- Mayer at [23]. Ms Pike's view was that YV's goods and services are identical or similar to those specified in relation to Total's mark in the respects identified in her decision. It was also Floyd J's view, in the respects identified in his decision.
- In an effort to distinguish between what YV provides to its customers and the goods and services specified in respect of Total's trade mark, Mr Alexander submitted that YV supplies goods in the form of set top boxes, rather than any sort of service equivalent or similar to that which Total provides.
- There is an aspect of what YV or those licensed by it do which can be regarded as supply of goods, namely provision of the "youview" set top boxes. But they are provided in order to be the vehicle for provision of a "youview" service based on constantly updated streams of digital information which furnish the material for the EPG and the on demand TV service which "youview" provides to customers. Survey evidence shows that customers see "youview" as a service, which seems entirely natural to me. The supply of relevant goods and the supply of the service are complementary and integrated. Both forms of supply make use of digital databases, telecommunications services and computer programmes giving access to such databases. In my view, there is nothing magic or particularly technical about viewing them in this way, and the average consumer would understand that this was the nature of the goods and service being supplied under the "youview" mark. This attempted point of distinction cannot be sustained.
- Mr Alexander submitted that a different test falls to be applied in relation to the proceedings in which Total opposed registration of YV's mark as compared to in the present proceedings. In the former, it is appropriate to focus (as the IPO and Floyd J did) on the possibility of confusion with the earlier mark registered by Total across the whole range of potential applications of YV's proposed later mark. But for the purposes of infringement proceedings involving application of Article 5(1)(b) of the Directive, it is necessary to focus on the actual activities of the alleged infringer in addressing the question whether there is any likelihood of confusion. This difference was explained in Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] ECR I-4231. At paras. [57]-[58] the ECJ said this:
"57 As is apparent from the Court's case law (Arsenal Football Club [Case C-206/01 [2002] ECR I-10273]; Anheuser-Busch Inc v Budeejovický Budvar národní podnik (C-245/02) [2004] ECR I-10989; Medion [Case C-120/04 [2005] ECR I-8551]; Adam Opel [Case C-48/05 [2007] ECR I-1017]; and Céline [Case C-17/06 [2007] ECR I-07041]), the proprietor of a registered mark may prevent the use of a sign by a third party which is identical with, or similar to, his mark under Art.5(1)(b) of Directive 89/104 only if the following four conditions are satisfied:
• that use must be in the course of trade;
• it must be without the consent of the proprietor of the mark;
• it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered; and
• it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public.
58 As regards more particularly the fourth condition, first, as pointed out in [47] above, Art.5(1)(b) of Directive 89/104 is designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, there exists a likelihood of confusion on the part of the public."
- In the circumstances of the case, the first three conditions were found to be satisfied. However, the claim of infringement by the proprietors of the registered mark (O2 and O2 (UK)) failed because the fourth condition was not satisfied. At paras. [65]-[67] the Court explained the approach to be adopted, as follows:
"64 In that regard, contrary to the submission of O2 and O2 (UK), the referring court was right to limit its analysis to the context in which the sign similar to the bubbles trade marks was used by H3G, for the purpose of assessing the existence of a likelihood of confusion.
65 It is true that the notion of likelihood of confusion is the same in Arts 4(1)(b) and 5(1)(b) of Directive 89/104 (see, to that effect, Marca Mode CV v Adidas AG (C-425/98) [2000] ECR I-4861 at [25]–[28]).
66 Article 4(1)(b) of Directive 89/104, however, concerns the application for registration of a mark. Once a mark has been registered its proprietor has the right to use it as he sees fit so that, for the purposes of assessing whether the application for registration falls within the ground for refusal laid down in that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent's earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered.
67 By contrast, in the case provided for in Art.5(1)(b) of Directive 89/104 , the third party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion."
- In my judgment, however, this contrast of approach does not assist YV in this case. In line with the O2 judgment at para. [66], Total as the proprietor of a registered trade mark has a right to use it as it sees fit. A registered trade mark has in certain respects the character of a property right, giving Total the right to oppose usage of a similar sign within the fair scope of the specification of the goods and services in respect of which it has registered its mark. The ambit of that specification can only be reduced in light of the actual use made of the mark by Total as the proprietor after five years, and in the meantime Total is entitled to seek to enforce the protection provided by its mark on the basis of notional and fair use across the breadth of the goods and services for which it is registered, on the proper construction of the terms used: see Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] RPC 40, [79]-[81] per Jacob LJ ("… the court must assume that the mark has been in use and developed such a reputation and goodwill for the specification of goods or services", [79]). In this respect, there is a correspondence with the approach applicable in the opposition proceedings before the IPO and Floyd J: see para. [7] of his judgment. Much of the argument and discussion in those proceedings concerned the proper interpretation of the goods and services specified in respect of Total's trade mark (in order to compare that with the goods and services to be specified in respect of YV's proposed trade mark), and is of relevance to the case before me. Under Issue 4, what has to be compared, for the purposes of application of Article 5(1)(b), is the actual goods and services for which YV is using its "youview" mark with the goods and services as specified in relation to Total's "Your View" mark. As it was put by the ECJ in third condition identified in its judgment in O2 at para. [57], an infringement claim can only be brought in respect of goods or services "which are identical with, or similar to, those for which the mark is registered."
- In my view, on the facts of the present case, the goods and services being provided by YV are either identical with or highly similar to those specified in relation to Total's "Your View" trade mark. The "youview" set top box and the service for which it is the vehicle involve:
i) provision of a database: the EPG. As Floyd J observed at para. [20] of his judgment, "a critical part of an electronic programming guide for a television is a database". See also, e.g., Ms Pike's discussion at para. [15] of her decision, culminating in her finding that "data recordings including audio, video, still and moving images and text in compressed and uncompressed form" are identical to "databases", as specified by Total in respect of its mark. It is difficult, if not impossible, to distinguish this specification in relation to YV's proposed mark from what the "youview" set top box service does in fact involve;
ii) database programs: the programs allowing operation of the EPG and access to the databases of TV programmes maintained by TV companies. See also, e.g., Ms Pike's discussion at para. [16] of her decision, in which she found that YV's proposed specification of "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" was identical to Total's "Database programs". Again, it is difficult, if not impossible, to distinguish this part of YV's proposed specification from what the "youview" set top box and service does in fact involve;
iii) computerised database management: the management function to make the EPG operable and that to allow operational access to the databases of TV companies;
iv) compilation of information into a database: the compilation of the information required for the EPG database;
v) providing access to computer databases, both in the form of the EPG database internal to the set top boxes and in the form of the external databases of TV programmes maintained by TV companies; and
vi) telecommunication services: by allowing for reception of DTT television and streaming of digital TV content via broadband telecommunications networks. In relation to this category of service, I agree with the view of Ms Pike and Floyd J that the concept of "telecommunications services" is a wide one: see paras. [22] to [29] in the judgment of Floyd J. As he said at [26], rejecting the submission of Mr Alexander that the concept should be limited to the core of telecommunications, such as telephone and broadband, rather than broadcasting, "I think that once one has, as one does, a situation in which the same piece of apparatus, be it a smart phone or a computer, is capable of receiving both telephone calls and television programs, it becomes extremely difficult to maintain the distinction for which Mr Alexander contends." But even on a narrower interpretation of the concept, the "youview" set top box and service involves identity or a high degree of similarity with the "telecommunications services" specified in relation to Total's trade mark, since the service depends in large part upon allowing customers to draw upon TV content from TV company databases streamed via internet and broadband and across what are on any view telecommunications networks and there is a high degree of complementarity between the set top box and the service provided, which depends upon telecommunications services: see para. [28] of Ms Pike's decision and paras. [22] to [29] of the judgment of Floyd J.
(I do not consider that there is identity or similarity in relation to the further specified element of "Provision of commercial business information by means of a computer database").
- Mr Alexander submits that the two notional uses of the "youview" sign which Floyd J had to consider (see para. [42] above) are materially different from the actual goods and services supplied by YV under that sign. I do not agree. The actual goods and service being supplied by YV under its mark cannot be neatly or substantively distinguished from those for which it sought the registration of that mark. In any event, I consider that in critical and unavoidable respects, there is identity, alternatively a high degree of similarity, between the goods and services being provided by YV under the "youview" mark and the goods and services specified for Total's trade mark.
- Mr Alexander also suggested that this is an area in relation to which a reference to the CJEU would be required. Again, I disagree. In my view, the proper approach to interpretation of the specification of goods and services for Total's trade mark is straightforward and clear. There is a significant body of authority in support of it. The question whether YV's activities fall within the scope of that specification, as properly construed, is a question of fact for assessment of the national court, in relation to which general guidance from the CJEU on interpretation of EU law is not required.
Issue 5: is the sign "youview", in stylised or word form, similar to Total's "You View" trade mark?
- In the opposition proceedings, the marks to be compared were:
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These are the same marks which are relevant in the present proceedings.
- In my judgment, the answer to the question in this Issue is again "Yes". I reach this conclusion notwithstanding the different style of presentation of the "youview" mark. Ms Pike considered that the marks were similar: see paras. [47] to [49] of her decision. At paras. [48] and [49] she said this:
"48. The authorities direct that, in making a comparison between the marks, I must have regard to each mark's visual, aural and conceptual characteristics. I have to decide which, if any, of their components I consider to be distinctive and dominant, without engaging in an artificial dissection of the marks, because the average consumer normally perceives a mark as a whole and does not analyse its details. Both marks consist of two-word phrases (conjoined words, in the applicant's case, about which I say more below) which it would be artificial to dissect: they 'hang together' as wholes. I consider 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.
49. Counsel argued at some length about their perceived similarities and dissimilarities. The perception of the average consumer will be of a your view trade mark and a you view trade mark. The meaning and the words is what is going to be remembered; a view by the person being addressed (you/your). The trade marks are clearly orally highly similar and conceptually similar. The stylisation of the application is noted but it does not change the sense and the perception of the trade mark. 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."
- As Floyd J observed (at para. [35] of his judgment), she is ideally qualified by her expertise working in the IPO to make this kind of judgment. Floyd J approved this part of her reasoning: see [31]-[35]. I agree with both of them and the reasons they gave.
Issue 6: Is there a likelihood of confusion?
- In my judgment, the answer to this question is once more "Yes". This was a matter which was subject to close, balanced and careful review by Ms Pike in her decision, at paras. [47] to [53]. Her decision was upheld by Floyd J at [30]-[35]. I agree with the reasons they gave.
- The dividing up of Issues 4 to 6, though analytically helpful, is somewhat artificial, since Article 5(1)(b) of the Directive and section 10(2) of the Act call for an overarching assessment whether there is a likelihood of confusion on the part of the public, having regard to the two identified aspects of (i) comparison of the registered trade mark and the sign used by the alleged infringer (to see if they are identical or similar) and (ii) comparison of the goods or services in issue (to see if they are identical or similar). The analysis under Issues 4 and 5, in which I have found that there is a high degree of similarity between the two marks in issue and identity or close similarity between the goods and services provided by YV and those for which the trade mark is registered, makes it inherently probable that there may indeed exist a likelihood of confusion on the part of the public. Adopting the perspective of the average consumer of the goods or services in question, i.e. an ordinary member of the public deemed to have notice of Total's registered mark who is a potential customer coming across the sort of service offered by YV, and taking into account all the circumstances of the use of the relevant sign by YV that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him (see Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [87]), I consider that there is a likelihood of confusion in the requisite sense.
- There is convergence of the relevant TV and telecommunications markets. The commercial partners behind YV include telecommunications companies with whom Total competes in relation to the services it offers. The evidence shows that the "youview" set top boxes are often supplied bundled together with telecommunications services offered by those companies. In these circumstances, and given the overall close similarity in the aural, visual and linguistic content of the "Your View" and "youview" signs, I consider there is a strong likelihood of confusion on the part of the public.
- Against this, in relation to this Issue Mr Alexander relied on the importance of context in the use by the alleged infringer of its sign in the market place: see Specsavers International Health Care Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19, at [76]-[88]. As the Court of Appeal explained in that judgment, particularly by reference to the judgment of the ECJ in O2, it is not sufficient that the goods or services presented by the alleged infringer under its sign should be the same as or similar to the goods and services in respect of which the earlier mark has been registered; it is also necessary to examine whether there is some feature of the context in which the alleged infringer presents its goods or services which distinguishes their source from the proprietor of the registered mark, so as to remove the likelihood of confusion of the average consumer which would otherwise be present. In O2, the ECJ referred to the form of advertisement used by the alleged infringer, H3G, and found that it was not misleading "and, in particular, did not suggest that there was any form of commercial link between O2 and O2 (UK) on the one hand, and H3G, on the other" (para. [63]; cited in Specsavers at [84]); the ECJ therefore found that the fourth condition it had identified at paras. [57]-[58] of its judgment for a finding of infringement had not been satisfied. It should also be noted here, since it is relevant to Issue 7 below, that the approach to interpretation of Article 5(1)(b) of the Directive stipulated by the ECJ reflects the "essential function" of a registered trade mark, "which is to guarantee to consumers the origin of the goods or services" (see O2, para. [57], fourth bullet point).
- There were various permutations of YV's argument based on Specsavers, which drew on overlapping strands. The thrust of its case was as follows.
- Mr Alexander sought to contend that there is no likelihood of confusion, because the consuming public will identify the "youview" set top boxes and service simply as an extension of the existing "Freeview" service provided by TV companies. I do not accept this. On the evidence, there is no strong or direct linkage among consumers between "Freeview" and "youview", and certainly none which would eliminate the likelihood of confusion between the "youview" and "Your View" services as explained above, and by Ms Pike and Floyd J. In particular:
i) Some 95% of "youview" set top boxes are supplied to customers as part of bundled services from the telecommunications companies which have invested in YV, which are not responsible for nor connected with the "Freeview" service;
ii) The branding on the set top boxes for sale in shops does not link "youview" with "Freeview". Surveys of customers do not indicate that they regard "youview" as an extension of "Freeview". If anything, the branding on set top boxes and customer perception as revealed in surveys suggests that they are perceived more as competing brands than as, in essence, the same brand.
- In this regard, it is noteworthy that the factual context in both O2 and Specsavers was very different from the present case. What was in issue in both those cases was comparative advertising, in which the alleged infringer of the registered mark drew attention to the goods and services of the proprietor of the registered mark specifically in order to compare and contrast them with its own competing goods and services. In the context of such comparative advertising, it may be relatively easy for a court to find that the context shows that there is no likelihood of confusion of the average consumer as to the source of the competing goods and services, precisely because their attention is drawn by the advertising to the different source of the competitor's goods and services which are being promoted by that advertising. But in this case, there was no element of comparative advertising. YV's goods and services in the same fields as are specified in respect of Total's mark are simply being sold under the similar "youview" sign, and it is accordingly likely that the average consumer will be confused.
- Mr Alexander also made a converse submission, relying on the use which Total has in fact made of the "Your View" mark and the linkage it has thereby established in the minds of its customers that it is used for Total's online billing platform, which provides a view of their data. He submits that this reputation makes it implausible that they, or an average consumer, will think that anything YV is doing is connected with Total.
- I do not accept this submission either. Nothing that Total has done has diminished the ordinary effect which a registered trade mark is intended to have under the framework set out in the Directive and the Act, which is to define an area of protection for the reputation of the proprietor of the mark among the consuming public by reference to the goods and services specified in respect of the mark. In view of the specification registered for Total's mark, and particularly in view of the converging nature of the telecommunications and broadcasting fields of activity, I consider that the average consumer presented with YV's "youview" set top box and service would think that it was entirely plausible that the "youview" goods and service were commercially associated with and derived from Total, as a variant and development within those fields of its "Your View" service.
- Mr Alexander says there is no possibility of confusion because Total's use of its "Your View" mark has always been in connection with, and as a sub-facility of, its general "Total" brand. Also, he says, Total always uses the mark in connection with a tree device, which is clearly absent from YV's use of its "youview" sign, thereby again reducing the likelihood of confusion.
- I do not accept these contentions. On the materials in evidence, Total has made clear use of the "Your View" sign for an important part of its competitive offering to consumers, and the average consumer would not regard it as subsumed within use of the "Total" brand. Similarly, the "Your View" sign is not intimately associated with and bound up with Total's tree device in such a way that the average consumer would think that use of the similar "youview" sign could not be regarded as connected with that sign, by virtue of the absence of that device. The tree device makes no significant visual or other impact as something which qualifies or modifies use of the "Your View" mark.
- In my view these latter variants of Mr Alexander's submissions reviewed at paras. [98]-[101] above find no support in, and are in fact difficult to reconcile with, the judgments in O2 and Specsavers. In those judgments, the focus was on whether there was something about the way in which the alleged infringer presented its goods and services under its sign which made it clear that, notwithstanding the similarity of the goods and services and the similarity of the sign, the source of its goods and services was entirely distinct from those of the proprietor of the relevant registered mark. As the ECJ said in O2 at para. [64], "the referring court was right to limit its analysis to the context in which the sign similar to the bubbles trade marks was used by H3G, for the purpose of assessing a likelihood of confusion." It did not suggest that the referring court should also have looked to see whether there was some feature of the way in which O2 had utilised its registered trade marks which provided context against which it might be said that a likelihood of confusion could not arise. That would have been inconsistent with the Court's observation at para. [66] regarding the nature of the right which registration of a trade mark confers on its proprietor, and with the Court's general case law regarding the extent of the protection conferred as of right when a trade mark is registered: see, e.g., Case C-65/12 Leidseplein Beheer BV v Red Bull GmbH, judgment of 6 February 2014, paras. [30]-[32]; also see Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] RPC 40, [79]-[81] per Jacob LJ. And in my view, the Court of Appeal in Specsavers, in particular at paras. [87]-[88], was similarly focussing on the way in which the alleged infringer made use of its sign in assessing whether there was something in the overall context which removed any likelihood of confusion of the average consumer. It, likewise, did not suggest that the use in practice made of the registered mark by the proprietor of that mark could provide relevant context for the purposes of application of the principles derived from O2 to diminish the protection associated with the registration of that mark.
- It may be that – albeit this is not directly supported by O2 and Specsavers - it is possible to conceive of a case in which some behaviour by the proprietor of a registered mark sent such a clear and unambiguous signal to consumers in the market that they would understand that, notwithstanding the specification of the goods and services registered in respect of that mark, the goods and services for which that mark was used would only ever be in a narrower field than in that specified under the registration. In such a case, it might be said that if another undertaking came along and started using a similar sign in relation to selling goods and services within the scope of the registered specified goods and services, but of a character clearly and obviously distinct from the narrower field in which alone the mark's proprietor had in effect declared itself to be interested, there would in those circumstances be no likelihood of confusion of the consuming public. Put another way, it might be said that in such a case the use of the later sign would not impinge upon the "essential function" of the registered trade mark. However, this is a type of situation very far removed from the circumstances of the present case.
- Mr Alexander further submitted that the nature of the average consumer and the commercial context is such that they would be likely to pay close attention to the goods and services being acquired and the precise brand names used, so that they would not be confused as to what they were purchasing or the provider thereof. I do not accept this submission either. It is contradicted by the requirement that the court assume, whatever the actual position, that the registered mark has been in use and has developed relevant reputation and goodwill with consumers for the specification of goods or services in respect of it: Reed Executive Plc at [79]. Moreover, in the circumstances of this case, I do not consider that the average consumer would bring such careful and discerning scrutiny to bear. The commercial context is one of increasing convergence of streaming of audio visual content, including TV programmes, and provision of telecommunications services, and access to extensive digitised databases to provide increasing consumer choice in the provision of such services. Consumers are more likely to be focused on how well particular goods and services meet their requirements than in spotting fine distinctions regarding the providers of those goods and services. In this context, I consider that the likelihood of confusion of the public is high.
- Mr Alexander accepted that, in order for Total to succeed, it is not necessary for it to adduce evidence of actual confusion of customers. Nonetheless, he argued that it was significant that there was no evidence of confusion having arisen, despite the extensive use by YV of its "youview" mark. He says that this supports his submission that it is "inconceivable that any consumers could think that YouView boxes and Total's online billing platform come from the same or economically-linked undertakings."
- In my view, this submission fails to face up to the force of the argument for Total. In the converging spheres of activity in which Total and YV are engaged, there is a real possibility that the services they offer are already perceived as being in competition and will increasingly come into competition through continued development of the market place and what they seek to offer to consumers to maintain their competitive edge, and in those circumstances there is in my opinion a high likelihood that the public would be confused regarding the source of the goods and services being offered to them. This is an assessment which it is properly open to the Court to make without the requirement of evidence of actual confusion of consumers, which would be difficult to compile and would in any event not be decisive. Total has registered its trade mark to provide it with protection in such a market place, and YV is infringing Total's rights in relation to that mark by using its confusingly similar "youview" sign for the similar goods and services which it offers to consumers.
- In relation to Issue 6, Mr Alexander again pressed for the Court to make a reference to the CJEU. He said that the guidance of the CJEU was required on the question of what is the proper approach to assessing the features of the average consumer and to the relevant context for evaluation of the likelihood of confusion for the purposes of Article 5(1)(b) of the Directive. Again, however, I do not agree. As Kitchin LJ said in Specsavers at [87], the general position regarding the nature of the average consumer and the question of the likelihood of confusion "is now clear". What remains for this Court is to apply the guidance already given by the authorities to the particular facts of this case. No reference to the CJEU is required to provide guidance in relation to that task, nor to assist this Court to arrive at a determination properly in compliance with EU law.
- As a final footnote in relation to Total's infringement case under this Issue, I agree with YV's submission that there is no case available to Total based, not on the likelihood of confusion of the average consumer (which the Court is in a position to assess for itself), but on the likelihood of confusion of specialist business customers in relation to what were referred to at the hearing as "business to business" services. Total did not plead a case regarding understanding of an economic operator with special knowledge of the relevant market, such as TV content providers. Nor was there any evidence which would have allowed me to assess with any confidence that there would be any likelihood that such an operator would be confused between the goods and services offered by Total under its mark and by YV under its sign.
Issue 7: Do YV's activities adversely affect the functions of Total's trade mark?
- In order to show infringement of a trade mark, the defendant's use of the relevant sign must adversely affect, or be liable adversely to affect, the functions of the trade mark: see Case C-65/12 Leidseplein Beheer BV v Red Bull GmbH, judgment of 6 February 2014, paras. [30]-[32]; O2, paras. [57]-[58]. The essential function of a trade mark is to guarantee the origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin: Case C-206/01 Arsenal Football Club plc v Reed [2002] ECR I-10273, at para. [48]. Other functions of a trade mark include "guaranteeing the quality of those goods or services or those of communication, investment or advertising": Leidseplein Beheer BV v Red Bull GmbH, para. [30].
- In my view, the answer to the question in this Issue is again "Yes". This is for the reasons already given above, in particular in relation to Issue (6) (likelihood of confusion). If YV uses its "youview" sign as it has been and is doing, it is likely that the average consumer will be confused in relation to the origin of the goods and services being offered to them. YV's actions are thus liable to have an adverse effect upon the functions, including the "essential function", of Total's trade mark.
Conclusion
- For the reasons given above, Total's infringement claim succeeds and YV's counterclaim for a declaration of invalidity is dismissed. I decline to make a reference to the CJEU, on the grounds that no reference is required for the proper determination of these proceedings in accordance with EU law.
- Mr Alexander made general submissions regarding the potential dangers associated with grant of registered trade mark protection on an excessively wide basis, which would be likely to inhibit fair competition and adversely affect the proper operation of the market. He referred in particular to comments by Laddie J in Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850, at 863-865; by Jacob J in Laboratoire De La Mer Trade Marks [2002] FSR 51, at [19]; and by Aldous LJ Thomson Holidays v Norwegian Cruise Line [2002] EWCA Civ 1828; [2003] RPC 32, at [29]. Given these concerns and potential dangers, Mr Alexander submitted that the Court should be astute to limit the protection to be afforded to Total in respect of its registered trade mark in these proceedings.
- No doubt there are potential dangers of this kind if excessive protective effect is given to a trade mark, and a Court should of course be careful to ensure that the protection to be afforded is properly within the scope of the Directive and the Act. But in this case I am satisfied that the protection to be afforded in these proceedings to Total in relation to its registered "Your View" trade mark is well within that contemplated by the Directive and the Act. Total acted in good faith to specify the relevant goods and services in relation to which it claimed protection, it intended to use its trade mark in relation to such goods and services and has done so. It has not acted in order to stymie YV's business plans or to oppress YV. It has specified the goods and services in relation to which it claims the protection of its mark with reasonable clarity and precision. It has acted to protect its own legitimate interests in relation to the goods and services so specified, within the scope of the objective of the Directive and the Act. There is no improper or unfair advantage being taken by Total of the regime under the Directive and the Act.
