YouView says it has no intention of changing its name despite a High Court appeal ruling earlier this month that upheld a previous Trade Mark judgement that said its name was too similar to the YOUR VIEW mark already registered. The original opposition was raised by Total Limited, a business to business provider of core telecoms services including fixed line and mobile. The company applied for its Trade Mark in June 2009 and this was registered before YouView.
The original decision in favour of Total Limited was made by Mrs Judi Pike, the hearing officer sitting for the Registrar of Trade Marks on May 30 this year. Total’s opposition is based on the 1994 law that states that, ‘A trade mark shall not be registered if because … 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 on the part of the public, which includes the likelihood of association with the earlier trade mark.”
Among other things, YouView’s legal team argued that the original Trade Marks hearing officer gave too broad a construction to the terms ‘telecommunications service’ and to ‘database programs and databases’ in the complaint.
YouView argued, for instance, that you should not include what are essentially broadcasting services under the definition of ‘telecommunications services’, which should be limited to telephony and broadband. But this argument was rejected by the judge, who said in his statement: “It remains the case that an apparatus for receiving one is an apparatus for receiving the other. That is enough to show that there is a very close similarity between telecommunication services and apparatus for television and radio reception.” He reiterated later: “I have difficulty with the suggestion that telecommunications services should be given a narrow meaning which excludes broadcasting.”
The appeal hearing was held on November 1 at the High Court of Justice, Chancery Division, Intellectual Property, and the judgement outlines the complex legal arguments relating to the nature of the businesses and whether people would be confused by the Trade Mark similarities. There were also lengthy legal arguments about the appearance of the respective Trade Marks. After all considerations, The Hon Mr Justice Floyd concluded that YouView’s appeal against the original finding in favour of Total Limited will be dismissed.
Managing Director of Total Ltd., Stuart Baikie, says “We are delighted with the judgment. ‘YourView’ is a key differentiator for us and is a significant part of our business and future growth strategy, so it was absolutely imperative that we defended the trade mark that was granted to us. Our customer base and reputation is built on a winning combination of telecommunications services combined with our unique support systems, of which ‘YourView’ plays an essential part.”
A spokesperson for YouView said this morning: “YouView has no intention of changing its name. This matter is complex and subject to a number of on-going legal actions and will be settled in the courts.” Total Ltd says it intends to take further action to protect its brand.