Infringement - Appellant seeking to register trademark 'YouView'
YouView TV Ltd v Total Ltd: Chancery Division (Mr Justice Floyd): 9 November 2012
The applicant company was a joint venture between a number of well-known media and broadcasting corporations, including the BBC, ITV, BT and Channel 4, whose business was to launch a device, analogous to the Freeview set top box, that allowed reception of free-to-air digital radio and television broadcasts.
The applicant sought to register a trademark 'YouView', in six forms. Its 'YouView' box was intended to be an apparatus for television and radio reception, and would require on-board software to carry out those, and other, functions. Registration of the trademark was sought for the following description of goods in class 9: (i) apparatus for television and radio reception and (ii) software for embedding in apparatus for television and radio reception. The respondent company owned an earlier registered trademark 'Your View', including for class 9 (database programs and databases). It contended that the mark was not registrable in respect of description: (i) In respect of description (ii), the respondent objected, pursuant to section 5(2)(b) of the Trade Mark Act 1994, to the introduction of a newly worded description.
The hearing officer, sitting on behalf of the Registrar of Trade Marks, held among other things: (i) that both marks consisted of two-word phrases, which hung together as wholes; (ii) that the trade marks were orally highly similar and conceptually similar; and (iii) that there was a high degree of similarity between the applicant's apparatus for telecommunications and the respondent's telecommunications services. Accordingly, the hearing officer upheld in part, the respondent's opposition to the trademark application. In so doing, she had regard to the proposed logo for the applicant's mark. The applicant appealed against that decision.
It fell to be determined, among other things: (i) whether, as contended by the applicant, 'database' and 'database programs' should be construed to mean 'freestanding' ones so that where database software was sold for inclusion in a more complex software arrangement, it lost its character as database software at the point of sale; and (ii) whether the hearing officer had erred in principle in her approach to the comparison of the marks for the purpose of determining whether they were identical or similar. The appeal would be dismissed.
(1) If database software was being sold for inclusion in a more complex software arrangement, it did not lose its character as database software at the point of sale (see  of the judgment). In the instant case, the submission on behalf of the applicant that 'database' and 'database programs' should be construed to mean 'freestanding' ones would be rejected. There was no reason to limit it in that way. Once it was appreciated that the specification of the opposed mark included 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, question (i) answered itself (see ,  of the judgment).
(2) In the instant case, there had been no error of principle in the visual comparison of the marks. There was a conceptual difference, albeit a very subtle one. The hearing officer had parenthesised the words 'you/your' and it was clear that she had had that subtle difference in mind. The aural similarity was a matter for judgment and her assessment had been correct. The hearing officer had been engaged in a multifactorial assessment which her expertise ideally qualified her to undertake. There had been no error of principle in her legal approach or in the way in which she had applied it to the comparison in the instant case. She had reached a conclusion which she had been entitled to reach (see ,  of the judgment). British Sugar plc v James Robertson & Sons Ltd  RPC 281 considered.
Daniel Alexander QC and James Abrahams (instructed by Bristows) for the applicant; Simon Malynicz (instructed by Williams LLP) for the respondent.