Youview TV Ltd v Total Ltd

Factual and Procedural Background

This is an appeal from the decision of the hearing officer sitting for the Registrar of Trade Marks dated 30 May 2012, which upheld in part the respondent's opposition to trade mark application no. 2543659A. The appellants are a joint venture of several broadcasting and telecommunications companies whose business is to launch a device analogous to the Freeview set top box, called the YouView box. This device allows reception of free-to-air digital radio and television broadcasts, includes recording facilities, and provides access to catch-up TV services over the internet. The appellants sought registration in class 9 for (a) "Apparatus for television and radio reception" and (b) "Software for embedding in apparatus for television and radio reception," the latter being a new description introduced on appeal. The respondents opposed the registration based on their prior registered trade mark "YOUR VIEW" under section 5(2)(b) of the Trade Marks Act 1994, alleging a likelihood of confusion due to similarity of marks and goods/services.

Legal Issues Presented

1. Whether the hearing officer erred in construing the earlier specification, particularly regarding the scope of "telecommunications services" and "database programs and databases."
2. Whether the hearing officer failed to properly evaluate the similarity of the marks themselves, including visual, aural, and conceptual aspects.
3. Whether the amended specification for "Software for embedding in apparatus for television and radio reception" should be allowed on appeal and how it affects the likelihood of confusion assessment.
4. Whether the goods "Apparatus for television and radio reception" are sufficiently similar to the respondents' "telecommunications services" to give rise to a likelihood of confusion.

Arguments of the Parties

Appellant's Arguments

• The hearing officer gave too broad a construction to the respondents' terms "telecommunications services" and "database programs and databases."
• The hearing officer failed to properly evaluate the visual, aural, and conceptual similarities of the marks, arguing that the appellants' mark is a single composite word embedded in a logo, differing conceptually and aurally from the respondents' mark.
• The newly introduced specification for software should be considered differently, limiting it to software embedded in apparatus for television and radio reception, thus not identical to database programs.

Respondent's Arguments

• The opposition should be upheld as the marks are similar and the goods/services overlap, creating a likelihood of confusion under section 5(2)(b).
• The hearing officer correctly construed "telecommunications services" broadly, including broadcasting and internet access, supported by Ofcom reports and classification notes.
• The amended specification for software should not be admitted on appeal without further evidence, but even if considered, it overlaps with their registered "database programs" due to the nature of software embedded in such apparatus.
• The hearing officer's assessment of the marks' similarity was correct, with both marks perceived as two-word phrases that are visually, aurally, and conceptually highly similar.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc	Assessment of similarity of goods/services considering nature, purpose, use, competition, and complementarity.	Guided the court's approach to comparing specifications and evaluating likelihood of confusion.
Boston Scientific Ltd v Office for Harmonization in the Internal Market (OHIM)	Definition of "complementary" goods as those closely connected, indispensable or important for use of the other.	Supported the finding of high complementarity between apparatus and telecommunications services.
British Sugar Plc v James Robertson & Sons Limited ("Treat") [1996] RPC 281	Guidance on assessing similarity of goods and careful scrutiny of specifications to focus on core meanings.	Used to analyze the scope of terms in the specifications and reject overly broad or narrow constructions.
Altecnic Ltd's Trade Mark Application (CAREMIX) [2002] R.P.C. 639	Significance of classification and relevance of class numbers in trade mark specifications.	Considered in relation to the interpretation of specifications.
Avnet Incorporated v Isoact Limited [1998] F.S.R. 16	Specifications should be confined to the core of possible meanings, avoiding wide constructions.	Applied to limit the scope of the specifications to their substance in trade.
Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd [2000] FSR 267	Specifications should not be given unnaturally narrow meanings.	Balanced against the need to avoid overly broad interpretations.
Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2003] RPC 32	Interpretation of specifications should reflect trade circumstances and public perception.	Supported the approach to construe specifications as understood by the average consumer.
Giorgio Armani SpA v Sunrich Clothing Limited [2010] EWHC 2939 (Ch)	Appellate consideration of amended specifications and fairness in opposition proceedings.	Guided the court's decision to consider the amended specification on appeal despite no prior evidence.
Advanced Perimeter Systems v Keycorp [2012] RPC 14 and [2012] RPC 15	Factors to consider when admitting amended specifications on appeal.	Supported the court's acceptance of the amended specification without unfairness to respondents.
Sabel BV v Puma AG [1998] RPC 199	Principles on likelihood of confusion including global appreciation and consumer perception.	Formed the basis for the court's assessment of mark similarity and likelihood of confusion.
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] FSR 77	Perspective of the average consumer and their imperfect recollection of marks.	Informed the court's approach to evaluating visual, aural, and conceptual similarity.
Marca Mode CV v Adidas AG & Adidas Benelux BV [2000] ETMR 723	Reputation of a mark does not alone establish likelihood of confusion.	Clarified that mere association is insufficient without confusion on origin.
Medion AG v Thomson Multimedia Sales Germany & Austria GmbH C-120/04	Assessment of dominant components in composite marks and overall impression.	Applied in evaluating the marks as wholes with dominant distinctive elements.
Shaker di L. Laudato & C. Sas v OHIM C-334/05 P (LIMONCELLO)	Use of dominant element in mark comparison where other components are negligible.	Supported the court's analysis of mark dominance and similarity.
The Chartered Institute of Patent Attorneys (IPTRANSLATOR) C-307/10 [2012] ETMR 42	Policy considerations on interpretation of trade mark specifications to avoid fuzziness.	Supported the court's balanced approach to construction of specifications.

Court's Reasoning and Analysis

The court commenced by affirming the hearing officer's meticulous and exhaustive comparison of the goods and services specifications, which involved a graduated assessment of similarity. The court accepted the established legal principles from key precedents, emphasizing the importance of assessing all relevant factors including nature, purpose, use, competition, and complementarity of goods and services.

Regarding the amended specification for software, the court acknowledged that although it was introduced for the first time on appeal, there was no unfairness in considering it, especially since illustrative evidence was admitted without objection. The court rejected the appellants' argument that the terms "database" and "database programs" should be narrowly construed to exclude software embedded in apparatus, reasoning that database software retains its character regardless of embedding and that the specification was not limited to software sold only as part of a larger article.

In relation to "apparatus for television and radio reception" and the respondents' "telecommunications services," the court upheld the hearing officer's broad construction of telecommunications services to include broadcasting and internet access. The court reasoned that the apparatus and the services are highly complementary, sharing the same purpose, users, and channels of trade, resulting in a high degree of similarity.

On the similarity of the marks, the court endorsed the hearing officer's approach of perceiving the marks as wholes, recognizing their dominant and distinctive elements. The court found the marks to be visually, aurally, and conceptually highly similar, noting that subtle conceptual differences did not undermine this conclusion. The hearing officer's multifactorial assessment was deemed to be within her expertise and free from error of principle.

Holding and Implications

The appeal is DISMISSED.

The court upheld the hearing officer's decision to refuse registration of the contested trade mark in the specified classes due to a likelihood of confusion with the respondents' earlier mark. The direct effect is that the appellants' trade mark application remains opposed and is not registered as sought. The decision does not establish new precedent but reaffirms established principles regarding specification construction, mark similarity assessment, and the treatment of amended specifications on appeal.