Bookmark
PDF
Share
CaseIQ

Shorts International Ltd v Google LLC

England and Wales Court of Appeal (Civil Division)

May 25, 2026

Smart Summary

Full
Judgment

Subsequent
References

CaseIQ

Smart Summary (Beta)

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

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).
Whether the Respondent's use infringed under s.10(3) (reputation/link and detriment to distinctive character or repute or unfair advantage).
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.
Whether any of the Appellant's marks should be revoked for non‑use.
Whether the Appellant could amend specifications (by negative exclusions such as "save for short films") to cure lack of distinctiveness.
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

Precedent	Rule or Principle Cited For	Application by the Court
Kynaston-Mainwaring v GVE London Ltd [2022] EWCA Civ 1339; [2023] RTR 17	General principles on appellate review of evaluative findings of fact.	Used to explain the appropriate approach on appeal to findings that are essentially factual.
Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25; [2025] RPC 15	Guidance specifically in the context of trade mark infringement and appellate review of evaluative conclusions.	Referred to when discussing deference to trial judge's evaluative conclusions on infringement.
Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454	Elements required to establish s.10(2) infringement and summary of requirements.	Adopted for setting out the checklist for s.10(2) infringement (similarity, goods/services, likelihood of confusion).
Montres Breguet v Samsung [2023] EWCA Civ 1478	Use "in relation to goods or services" requires use for the purpose of distinguishing the goods/services (trade mark use).	Applied when assessing whether particular uses by the Respondent were trade mark use.
Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA Civ 1207	Forms of confusion: direct, indirect, "wrong way round".	Used to explain the mental states that constitute likelihood of confusion.
Iconix (supra) at [38]	Purpose of the standard summary on likelihood of confusion.	Referred to in framing the summary of principles for global assessment of confusion.
Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2024] EWCA Civ 814	Weaker marks enjoy narrower protection; low distinctiveness points against finding confusion.	Applied to support the proposition that low distinctiveness reduces scope of protection.
PlanetArt LLC v Photobox Ltd [2020] EWHC 713 (Ch)	Support for principle that descriptive common elements point against confusion.	Used as supporting authority for effect of descriptiveness on likelihood of confusion.
Nicoventures Holdings Ltd v London Vape Co Ltd [2017] EWHC 3393 (Ch)	Illustration that descriptive words with minor styling do not create likelihood of confusion.	Used as an illustrative precedent supporting the judge's conclusion in this case.
Tesco v Lidl [2024] EWCA Civ 262	Imperfect recollection and how consumers rely on imperfect mental images of marks.	Referred to when discussing the average consumer's perception and imperfect recollection.
Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch)	Average consumer taken to be familiar with the registered trade mark for s.10(2) purposes.	Adopted as common ground and used to frame the approach to the average consumer in this case.
Adidas v Marca Mode (C-102/07)	CJEU warning against double counting of distinctiveness and public interest in keeping descriptive signs free.	Considered and distinguished on facts; court held judge did not double‑count or misapply the principle.
BSH Bosch and Siemens v EUIPO (KOMPRESSOR) (C-43/15)	Limitations on treating descriptiveness as preclusive of similarity; need for nuanced assessment of similarity.	Discussed at length; court concluded judge's nuanced approach was consistent with the CJEU's ruling.
L'Oréal v OHIM (C-235/05 P) [2006] ECR I-57	Principle that similarity must be assessed and not disregarded because of descriptiveness.	Referenced in discussion of BSH and the proper role of descriptiveness in comparison stage.
POSTKANTOOR (Koninklijke KPN Nederland NV v Benelux-Merkenbureau) (C-363/99) [2004] ECR I-1619	Approach to compound word marks and negative limitations; perceptible difference from sum of parts; limits on negative exclusions.	Applied when assessing the compound 383 Mark and rejecting proposed negative limitation ("save for short films").
Eurohypo AG v OHIM (C-304/06 P) [2008] ECR I-3297	A compound of non‑distinctive elements is not necessarily distinctive; overall impression controls.	Invoked in assessing whether a compound mark can be distinctive despite non‑distinctive parts.
Caffè Nero Group Ltd v EUIPO Case T-37/16	Figurative elements that do not convey an immediate and lasting impression are insignificant for s.3(1)(c).	Used to support treating modest figurative matter as insufficient to save a descriptive sign.
Technopol (Agencja Wydawnicza Technopol sp. z o.o. v OHIM) (C-51/10 P) [2011] ETMR 23	Legal principles for assessing s.3(1)(c) (descriptive indications).	Referred to when discussing the threshold for describing an element as descriptive.
Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch)	Figurative "figleaf" concept and overlap between s.3(1)(b) and s.3(1)(c).	Relied on in discussing when minor figurative matter can be ignored for descriptiveness analysis.
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281	Difficulties of proving acquired distinctiveness for descriptive words; need for compelling evidence.	Applied in assessing the Appellant's evidence on acquired distinctiveness.
W3 Ltd v easyGroup Ltd [2018] EWHC 7 (Ch)	General principles relevant to acquired distinctiveness assessment.	Adopted as a framework for assessing whether the 383 Mark had acquired distinctiveness through use.
Omega Engineering v Omega SA [2012] EWHC 3440 (Ch)	Application of POSTKANTOOR and limits on negative exclusions; guidance on legal certainty.	Applied in rejecting the Appellant's proposed negative limitation as contrary to legal certainty and insufficient.
Appointed Person decisions: FLYING SCOTSMAN TM [2012] RPC 7; Linkin Park [2016] 74	Guidance on insignificance of non‑verbal matter where it does not convey lasting impression; characteristics within s.3(1)(c) may include potential content.	Used to support the judge's approach to figurative matter and descriptiveness.
General Motors Corp v Yplon SA (C-375/97) [1999] ECR I-5421	Definition and assessment of "reputation" for s.10(3) purposes.	Applied when assessing whether the Appellant had a reputation among a significant part of the relevant public.

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.

Click here to read the full judgment