Shorts International Ltd v Google LLC

Factual and Procedural Background

The Appellant is a producer and distributor of short films and the proprietor of five registered trade marks (the "2018 Marks" and the "383 Mark"). The Respondent operates the YouTube platform and in 2021 launched a short-form video service called "Shorts". The Appellant sued for trade mark infringement (sections 10(2) and 10(3) of the Trade Marks Act 1994) and for passing off. The Respondent denied infringement, contended that the word "shorts" is descriptive of short-form audiovisual content, counterclaimed that the registrations were invalid under s.3(1) for lack of inherent or acquired distinctiveness, and sought revocation for non-use of four marks for certain goods and services.

After trial in October 2024, Judge Tappin delivered judgment on 31 October 2024: he held that the 2018 Marks (which include modest figurative elements) were valid but had low inherent distinctiveness, that the 383 Mark (the word mark) lacked distinctiveness and was invalid for most registered goods and services, that the Respondent's uses did not infringe (because the word was descriptive and the figurative elements differed), that some registrations should be revoked for non‑use, and that the passing off claim failed. A consequential order was made on 18 December 2024. The Appellant obtained permission to appeal on specified grounds; the Respondent obtained permission to cross‑appeal on validity and non‑use. The appeal was heard by Judge Phillips and Judge Falk on 10–11 March 2026 and the Court gave its approved judgment on 25 May 2026.

Legal Issues Presented

1. Whether the Respondent's use of signs including the word "shorts" infringed the Appellant's registered trade marks under s.10(2) of the Trade Marks Act 1994 (likelihood of confusion).
2. Whether the Respondent's use infringed under s.10(3) (reputation/link and detriment to distinctive character or repute or unfair advantage).
3. Whether the Appellant's registrations (notably the 383 Mark) were invalid under s.3(1)(b)–(d) for lack of inherent distinctive character or because they consist exclusively of descriptive indications.
4. Whether any of the Appellant's marks should be revoked for non‑use.
5. Whether the Appellant could amend specifications (by negative exclusions such as "save for short films") to cure lack of distinctiveness.
6. Whether the Appellant established passing off/goodwill and misrepresentation.

Arguments of the Parties

Appellant's Arguments

• The word "shorts", in context and at the relevant times, principally meant "short films" (professionally produced short films) and should not be treated as broadly descriptive of all short‑form audiovisual content.
• The 2018 Marks and the 383 Mark are distinctive (inherent or through use) for the registered goods and services; the 2018 Marks' figurative elements confer distinctiveness.
• The Respondent's uses (including standalone "Shorts" and composite logos) were trade mark use in relation to identical or similar goods/services and gave rise to a likelihood of confusion under s.10(2) and took unfair advantage/detracted from reputation under s.10(3).
• As a fall back, the Appellant sought to amend specifications to exclude "short films" to rescue distinctiveness for some goods/services.

Respondent's Arguments

• "Shorts" is descriptive of short‑form audiovisual content of the kind provided by the Respondent's service; many uses were purely descriptive and not trade mark use.
• The Appellant's marks have low inherent distinctiveness and, for the 383 Mark, lack distinctiveness for most goods/services; the marks have not acquired distinctive character through use in the UK.
• The Respondent relied on a defence under s.11(2)(b) (use of a non‑distinctive sign in accordance with honest practices) where relevant.
• The Respondent challenged the Appellant's evidence of reputation and market reach and contended any passing off claim failed because there was no misrepresentation to the public at large beyond a limited specialist group.

Table of Precedents Cited

Court's Reasoning and Analysis

The court conducted a global assessment of infringement and validity, applying established principles on likelihood of confusion, reputation and s.3(1) invalidity rules. Key analytical steps were:

• Meaning of "shorts": The trial judge's factual finding that at the relevant dates "shorts" extended beyond "short films" to include other short‑form audiovisual content was open on the evidence and not displaced on appeal.
• s.10(2) assessment: The court applied the standard multi‑factor global test (visual, aural, conceptual similarity; distinctiveness; imperfect recollection). It accepted that there were significant similarities between the Respondent's signs and the Appellant's marks but found those similarities lay in descriptive elements ("shorts" and the play symbol) rather than in the modest figurative elements that gave the 2018 Marks their limited distinctive character. Certain uses of "Shorts" (e.g., menu labels on pages) were held to be purely descriptive and not trade mark use in relation to goods/services.
• Role of distinctiveness: The court rejected the Appellant's contention that the judge impermissibly "double counted" descriptiveness. The judge permissibly took descriptiveness into account in assessing similarity and the significance of common elements as part of the global assessment, provided no inappropriate weight was given.
• s.10(3) and reputation: The court applied the CJEU test for reputation (General Motors) and concluded the Appellant had not shown that its marks were known by a significant part of the relevant public in the UK as at June 2021. The Appellant's factual evidence of use and audience reach was insufficient (hard numbers were small or related to later dates), so the s.10(3) claim failed for lack of reputation; a hypothetical further analysis also showed no detriment or unfair advantage.
• Validity under s.3(1): The court analysed s.3(1)(c) and (b). It held that modest figurative matter can, in principle, be insufficient to rescue a descriptive word if the non‑verbal content is insignificant in the overall sign. The 2018 Marks survived because the specific combination (word plus play symbol placed in the "O" and colouring) created an overall impression beyond the mere sum of descriptive parts. The 383 Mark (compound word SHORTSTV) was, however, held to be descriptive for a wide range of goods and services (the compound conveyed simply "shorts" provided by televisual means) and thus invalid for the majority of registrable items; it had not acquired distinctiveness through use (compelling evidence required but not present).
• Proposed amendment: The judge properly rejected a negative exclusion ("save for short films") as insufficiently clear and contrary to POSTKANTOOR/Omega principles; "short films" lacked a consistent definition and the exclusion would not cure the broader descriptiveness.
• Passing off and non‑use: The passing off claim failed because the Respondent's signs did not misrepresent origin to the relevant public. The judge found revocation for non‑use was appropriate for some goods and services (as determined at first instance), and the court did not disturb those findings.

Holding and Implications

HOLDING: The appeals by the Appellant on both infringement and validity are DISMISSED. The court affirmed the trial judge's conclusions that (i) the 2018 Marks are valid but possess low inherent distinctiveness (their limited distinctiveness arises from the combination with modest figurative elements), (ii) the 383 Mark is invalid for most goods and services and had not acquired distinctiveness, (iii) the Respondent's uses did not infringe under s.10(2) or s.10(3), and (iv) the passing off claim failed.

Implications: The direct effect is that the Appellant's claims against the Respondent fail and the 383 Mark is invalid for most registered goods/services; some earlier partial revocations for non‑use stand. The judgment applies established principles regarding descriptiveness, acquired distinctiveness, the global assessment of likelihood of confusion, and limits on negative specification amendments; it does not purport to establish novel legal precedent beyond application of those principles to the facts of this dispute.