Google successfully defended the claims of passing off and trade mark infringement, and was also partially successful in its counterclaim, challenging the validity of SIL’s earlier trade mark registrations for SHORTS and SHORTSTV, as outlined below (the “SIL Marks”):

UKTM No. 3428383 – SHORTSTV – registered 6 December 2019
 

Ultimately, it was held the SIL Marks were mostly valid (aside from the 3428383 word mark) but were not infringed under either Section 10(2) or 10(3) of the UK Trade Marks Act 1994 (the “Act”), and that Google’s use did not amount to passing off.

Background

SIL is a UK-based short-film distribution and production company. Google’s YouTube Shorts service launched in the UK in June 2021, and SIL claimed that Google’s uses of “YouTube Shorts” and “Shorts” infringed SIL’s registered trade marks under Sections 10(2) (confusion) and 10(3) (detriment to repute and distinctive character) of the Act, and amounted to passing off.

Google denied that its use was infringing, and denied that its use constituted passing off, arguing that “shorts” was descriptive of short-form video content appearing on the YouTube platform. Google also raised a defence under Section 11(2)(b) of the Act, on the grounds that “shorts” was descriptive of short-form video content and that Google’s use was in accordance with honest practices.

The case started out in the Intellectual Property Enterprise Court (“IPEC”) in June 2022, and then was transferred to the High Court in January 2023. The trial took place in the High Court in October 2024, where a number of witnesses were relied on for each side (nine witnesses for SIL and eight for Google).

Judgment

i. Validity of the SIL Marks

Google challenged the validity of the SIL Marks under Sections 3(1)(b), (c) and (d) of the Act.

On considering the validity of the SIL Marks, the judge considered the meaning of the word “shorts”. It found Google’s evidence had shown that between the years 2018 and 2021, the word “shorts” was being used to refer to short-form audiovisual content, which went beyond only short films. In fact, the evidence showed that “shorts” had been in use in the vernacular of the film, TV and broadcasting industries since before 2014.

Examples included a number of articles submitted from The Guardian, The Observer, The Telegraph, The Times and The Independent, showing use of “shorts” in various contexts, such as comedy shorts and TV-series shorts in a range of genres, lasting anywhere from 3-20 minutes.

Given that “shorts” was held to be widely understood by the average consumer to refer to short-form audiovisual content, it was held that SIL’s 3428383 word mark, SHORTSTV, was invalid under Sections 3(1)(b), (c) and (d). This was because it consisted of a combination of non-distinctive elements which did not create any perceptible difference between the word and the “mere sum of its parts”.

Moreover, SIL’s evidence did not meet the threshold for proving that SHORTSTV had acquired distinctive character. SIL submitted evidence that in 2017-2018, there had been use of “SHORTSTV” at the start and end of the Oscar-nominated short films compilations, and in publicity materials for its release. However, there was no evidence about how many people had access to these materials. Likewise, while there was use of SHORTSTV on Amazon Prime TV, no viewing figures were provided for the channel during the relevant times. Overall, it was found that the evidence did not show significant consumer exposure to SHORTSTV, and that evidence was not enough to meet the threshold for demonstrating acquired distinctiveness pursuant to the easyGroup principles.

However, in respect of the stylised SHORTS and SHORTSTV marks, the court found that while the “play symbol” inside the letter “O” would be recognised as designating a characteristic of the goods (that certain material can be played), the combination of these elements was enough to imbue the marks with sufficient (albeit low) distinctive character to be valid. The scope of the specifications however was limited to the evidence of use.  In respect of the class 9 goods “computer software” and “electronic entertainment software”, the judge arrived at a fair specification of “software for accessing audiovisual entertainment”. Likewise, the broad class 41 “entertainment services” were narrowed to “production, presentation and distribution of films, videos and television programmes”.

ii.  Infringement (Sections 10(2) and (3))

Having found SIL’s stylised marks valid, the court went on to consider whether they were infringed.

On the likelihood of confusion ground, it was held that as the distinctive character in SIL’s marks laid in the specific combination of the word “shorts” and the “play symbol” featuring inside the letter “O”, and that these elements were not present in Google’s uses, there would be no likelihood of confusion under Section 10(2). The judge found there were other additional factors pointing away from a likelihood of confusion, such as that the consumer would see other YouTube branding which always appeared alongside its use of “shorts”. They therefore would not mistake YouTube’s sign for the SIL Marks, nor assume the goods and services had come from the same or economically linked undertakings.

SIL had also claimed actual confusion, but the court rejected this too. The key incident showed a member of the public being confused as to the economic links between SIL and Google at the UK Asian Film Festival, but the judge found it was not clear that this person was “representative of an average consumer who is familiar with one or more of SIL’s Marks and sees one of Google’s composite signs”.

To the detriment of distinctive character and repute grounds under Section 10(3), the SIL Marks did not have the requisite reputation in the UK. Moreover, the judge found that even if a reputation had been found, Google’s use would not damage this reputation, nor dilute the distinctive character of the SIL Marks. This was because, as under the 10(2) ground, the specific combination of elements imbuing the SIL Marks with distinctive character were not present in Google’s use. Moreover, a number of SIL’s witnesses accepted that YouTube Shorts was an “excellent marketing tool” for SIL’s services and that it was not demeaning for SIL to be associated with YouTube.

iii.  Passing off

SIL’s passing off claim also failed. Although the judge accepted that the SIL Marks had protectable goodwill in the UK (but not in the word “shorts” alone), Google’s use of “shorts” did not amount to a misrepresentation, for similar reasons to the findings on confusion above, or thereby cause damage to SIL’s goodwill.

YouTube’s fame was key to this finding – the judge found that “YouTube is a very well known and long established brand. In my view there is no possibility of substantial numbers of members of the public being misled into believing that YouTube Shorts is a service of SIL”.  The judge also commented that there was no evidence that anyone had actually been deceived.

Defence

The judge acknowledged that it was not strictly necessary to consider Google’s defence under Section 11(2)(b) since SIL’s infringement claim failed. However, the judge found that if there had been confusion of detriment to the distinctive character of the SIL Marks, the defence would have failed. This was because at the time of launching YouTube Shorts in the UK, it had knowledge of the SIL Marks and business, and of allegations of infringement of SIL’s rights.

Comment
 

This case demonstrates the difficulties associated with enforcing marks with low or weak distinctive character. Ultimately, Google was held not to have infringed under Section 10(2) largely because its use did not feature the specific combination of elements which made SIL’s marks distinctive.

This serves as a reminder to consider the validity (and scope) of earlier trade mark rights before bringing infringement proceedings, especially the context and meaning of words within a specific industry – here, “shorts” had been recognised to mean short-form audiovisual content, from at least as early as the SIL Marks were registered. In the absence of strong evidence of acquired distinctiveness, it will likely be difficult to enforce such weak marks in infringement (and passing off) proceedings.

It is also interesting to consider that Google’s defence would have failed had infringement been found. Fortunately, the fame of YouTube and its specific use in conjunction with other house marks meant that consumers would not be confused. However, SIL been successful, Google would not have been allowed to rely on honest practices, given its knowledge of SIL and its claims of infringement.