Trade mark practitioners often try to get round some of the issues which prevent trade marks from being registered by adding “stylised” elements to what would otherwise be words or phrases which describe the product or service on offer.
This can work well to get a trade mark registered but can cause problems when the trade mark owner tries to enforce the mark against a third party.
This is exactly what happened when Shorts International Limited tried to enforce its “short trade marks” against Google when Google launched its “YouTube Shorts” service.
In the film industry, “shorts” is a widely used descriptive term for short films.
Shorts International Limited registered a series of marks including:
And a word mark “ShortsTV”.
These marks were registered for a range of goods and services including “entertainment services”, “short films”, “short films series” and “short form content”.
As part of its defence, Google applied to invalidate the trade marks on the basis that they were descriptive of “entertainment services” and in particular the common type of film content namely “shorts”.
This part of the defence was successful such that Shorts International Limited had its trade marks revoked (in part) and therefore lost its “double identity” infringement case that alleged that Google had unlawfully offered the same goods and services by reference to the trade mark “shorts”.
However, trade mark law also prevents use of marks that causes customer confusion, takes unfair advantage of registered trade marks or which are detrimental to the reputation of a registered trade mark. The problem for Shorts International Limited was that with such a descriptive series of trade marks, the marks had low customer recognition not least because of the widespread use of the term “shorts” across the world (both online and offline). Therefore, consumers did not associate the term “Shorts” with Shorts International Limited in a trade mark sense or as required to form the basis of a passing off action.
The net result was that Shorts International Limited lost not only its case but also some of its trade mark rights. See judgment here.
The case provides a timely reminder that no matter in which sector you operate, you need to have a brand (protected by trade marks) that is not descriptive of the goods and services you offer.
While you may be able to get something on the trade mark register, it only has real value if it can be enforced to give you the exclusive right to trade by reference to that name. If you choose a descriptive term, you will always run the risk of a court finding that your competitors are free to use the name you have chosen for your corporate identity.
To discuss any of the issues raised in this article, please contact Iain Connor.
