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England and Wales High Court: YouTube Shorts not infringing; 'SHORTS' and 'SHORTSTV' largely descriptive; invalidity and partial revocation succeed; passing off fails (Shorts International v Google)

Published on: 28 November 2024

Published by a LexisNexis IP expert
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Article summary

Shorts International Ltd v Google Llc [2024] EWHC 2738 (Ch)

What are the practical implications of this case?

This decision underscores the challenge of enforcing marks with limited distinctiveness—particularly where parts of a sign, or the sign overall, have become generic in everyday language or entrenched trade usage. Protection for marks containing descriptive matter is tightly confined and, absent significant use leading to acquired distinctiveness, infringement claims will falter even where the impugned sign differs only modestly. The ruling also highlights the decisive role of brand reputation when assessing likelihood of confusion or passing off. Here, YouTube’s renown was so great that the judge held there was no prospect of confusion with SIL, nor of large numbers of consumers being deceived into thinking YouTube Shorts was SIL’s service.

What was the background?

The defendant, Google, owns and runs the YouTube video platform, which the judge characterised as a ‘very well-known brand’...

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