Now you view it, now you don't: no YouView questions for Court of Justice

How we used to turn on TVs
before they had remotes

Here's a bit of breaking news: today Mr Justice Sales, sitting in the Intellectual Property Enterprise Court, England and Wales, became the third person to break a bit of bad news to YouView TV concerning its catchy name when he gave judgment today in Total Limited v YouView TV Limited [2014] EWHC 1963 (Ch). There was always likely to be trouble, given that Total Ltd owned the earlier word mark YOUR VIEW, registered in 2009 for "database programs and databases" (Class 9), "provision of commercial business information by means of a computer database; computerised database management; compilation of information into a database" (Class 35) and "providing access to computer databases; telecommunication services" (Class 38). Anyone setting up a free-to-air and catch-up internet TV service called YouView might reasonably predict trade mark infringement proceedings, in the absence of some sort of coexistence agreement. YouView pinned its hopes on, among other things, the argument that the scope of Total's trade mark was overwide, since the goods and services for which it was registered were specified with insufficient specificity -- a double whammy, considering that the mark was descriptive and non-distinctive in any case.  The learned judge did not agree, concluding:

"112. 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 in 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.

Cecil always confused
Catch-up TV with
Cat-Up TV ...

113. 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".

Now, if you can't win your case and are probably going to lose it, the next best outcome is that of hitting it into the long grass by getting the judge to refer it to the Court of Justice of the European Union (CJEU). That might buy enough time for something dramatic to happen such as the EU rewriting the law of trade marks entirely, the other side getting bored with the whole litigation, or (a little more likely) the CJEU coming up with an erroneous answer that changes the course of the action in its entirety.  Balls are often lost by golfers in the long grass, and that same word has often been said to characterise the trade mark law decisions of Europe's premier court, so Katfriend Daniel Alexander QC's attempt to secure a reference to the CJEU was quite a sensible one:

50. Mr Malynicz... 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 [on which see almost endless Katposts here] 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) [approved by the IPKat here] 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.

51. 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".

The judge however, taking this argument perfectly seriously, thought otherwise and refused to refer any questions to the CJEU at all, even about whether they thought that the latest technology, now employed successfully in the FIFA World Cup, might also be used to determining whether a likelihood of confusion existed between (dis)similar marks.

Total is now reported to be seeking an injunction, various bits of financial relief and costs.

The earlier litigation between the two over YouView's efforts to register its YOUVIEW as a trade mark is reported here and discussed by the IPKat here.

The IPKat doesn't think that the outcome of this case was ever in doubt, and wonders whether, following the adverse rulings of the Trade Mark Registry and the High Court in 2012 regarding its attempt to get YOUVIEW on to the register, the smartest thing to do at that point was to rebrand at that point, as at least some elements of the social media suggested (see eg here and here).  Merpel has a sneaking affection for the YouView brand. She can see the problems it faces with YOUR VIEW, but thinks it would have made a great alternative to SpecSavers ...