Willans defeats Bristows in YouView trademark case

The Cheltenham-based firm’s dispute resolution partner Paul Gordon was instructed for Total, a Gloucestershire based telecommunications company.

It had registered the trade mark Your View in November 2009 as the trading name of its online customer portal and opposed YouView’s 2010 trademark application on the grounds that it was too similar.

Gordon instructed Simon Malynicz of 3 New Square to lead the case. A Bristows team led by partner Paul Walsh acted for YouView, instructing lead counsel Daniel Alexander QC and junior James Abrahams of 8 New Square.

YouView is chaired by Lord Sugar and is a joint venture backed by major TV channels and broadband providers, including BBC, ITV, Channel 4, Channel 5, BT, TalkTalk, and Arqiva. It has a digital TV service and access to TV and on demand services via a set-top box.

Mr Justice Floyd handed down judgment for an appeal he had heard in the High Court, ruling that the name was “confusingly similar”.

Total initially opposed YouView’s application in the Trade Marks Registry and the opposition proceedings were decided on 30 May 2012. The hearing officer found that YouView’s trademark was “confusingly similar” to Total’s earlier trademark in a range of goods and services.

YouView then appealed against the decision of the Registry to the High Court for use of the trademark with software embedded into set-top boxes and the physical set-top boxes themselves. YouView argued that neither the trademarks nor the respective goods and services were confusingly similar.

Floyd J dismissed YouView’s appeal in its entirety, with the result that the earlier decision of the Trade Marks Registry stands.

Gordon said: “The Your View trademark has been registered since 20 November 2009, a fact that YouView were fully aware of when attempting to register YouView. Our client has done the right thing in defending a brand that is pivotal to their business and is legally theirs. We welcome the judge’s ruling.”

Gordon said that Total will take further infringement action, which is likely to include seeking an injunction limiting YouView’s use of the brand, financial relief and costs. Ultimately, Gordon said, this could force YouView to rebrand.

However, a spokesman for YouView suggested that it may appeal the decision, stating: “YouView has no intention of changing its name. This matter is complex and subject to a number of ongoing legal actions and will be settled in the courts.”

Field Fisher Waterhouse played a lead role in YouView’s creation due to its longstanding relationship with its client the BBC (27 September 2010).