In SHORTSTV v Google, the Court of Appeal upheld the invalidity of the SHORTSTV word mark (as exclusively descriptive) and found Google's YouTube Shorts logos did not infringe the valid figurative marks.

Exclusively descriptive trade marks should not get on to the register. Marks which are exclusively descriptive are also devoid of distinctive character. However, marks which contain figurative elements are rarely exclusively descriptive and are frequently registered. This is so, even where their main element is a word which describes the protected goods or services. Having obtained a registration certificate, owners of such marks can be tempted to object to other businesses using the same descriptive word within their competing brands.

Key points

The problem of “egg shell distinctiveness” has long perplexed the UK courts and the UK Intellectual Property Office. In practice, however, an increasing number of trade mark applications are being successfully opposed where the only real similarity between the marks is a descriptive English word

In some cases, this is the right result. The scope of protection of marks that were only registered due to the distinctiveness added by their figurative elements can increase over time. This happens where the descriptive element obtains a strong secondary meaning from its extensive use, often in a particular context where it has come to immediately denote the brand. Establishing such acquired distinctiveness usually requires extensive compelling evidence.

In Shorts International Ltd v Google LLC ([2024] EWCA Civ 1092, the marks asserted by Shorts International against Google had not acquired distinctive character; the evidence of use put forward to claim it, was insufficient. 

The Lord Chancellor (Birss LJ), who gave the leading judgment on appeal, agreed with the trial Judge the compound word mark SHORTSTV was invalid. It was exclusively descriptive and therefore also devoid of distinctive character. The trial Judge was entitled to find the meaning of "shorts" to include both short-form films and other short-form audiovisual content of any kind (such as TV).

More interesting was the appeal court’s finding on the figurative marks. These consist of the word SHORTS or SHORTSTV with a pictorial “play” symbol in red and located inside the O of SHORTS. The trial Judge had found these valid but not infringed by Google’s use of Shorts within its logos for its YouTube Shorts service (even though Google’s logos also included a different play symbol). The trial Judge made this finding notwithstanding that he accepted the marks were “similar” to some degree.

In assessing the figurative marks, the Lord Chancellor agreed with the trial Judge that the word "shorts" and the play symbol themselves are not distinctive. Therefore, such distinctive character as there is in the marks arises “from the combination of shorts with the play symbol placed within the letter 'O' (and the colouring)”. Because this combination is missing from Google’s YouTube Shorts logos, the finding of non-infringement was upheld.

For section 10(2) of the Trade Marks Act 1994 infringement and the assessment of the likelihood of confusion, the fact that the only common element between the mark and sign was descriptive of the goods and services was highly relevant. The trial Judge was entitled to take it into account. The Lord Chancellor was also unwilling to criticise the trial Judge for taking this factor into account at the point he was considering the similarity of the marks. The assessment of likelihood of confusion does not have a “rigid methodological criteria” but is a global multifactorial exercise which judges are entitled to conduct in different ways. 

Shorts International's claim under section 10(3) of the Trade Marks Act 1994, which requires proof that the asserted marks have a "reputation" in the United Kingdom, was also dismissed on appeal. The Lord Chancellor considered the trial Judge right to have found that the evidence put forward did not establish that the marks had a reputation at the relevant date. The relevant evidence put forward for that purpose was described as "paper thin”.

Why the SHORTSTV v Google judgment matters for UK trade mark disputes

The appeal judgment in Shorts International Ltd v Google LLC will be helpful to those seeking to defend against UK infringement claims and oppositions asserting descriptive marks in future. For those considering litigating such marks against third parties using the same descriptive word in a different visual context, it will act as reminder of the need for robust evidence to demonstrate that the descriptive word itself has acquired a strong secondary meaning.

What about EU trademarks which are descriptive in English?

It is usually necessary for UK businesses to seek protection also in the EU, so it is important to note the different position for oppositions to EU trademark applications. For these the EU IPO is likely to consider whether there is a likelihood of confusion in EU Member States where the English meaning of the common element is not understood and therefore any descriptiveness is likely to be disregarded. 

For further guidance on protecting and enforcing trade marks, see our trade marks service page.