Shorts International Limited v Google LLC

Shorts International Limited v Google LLC

Google's use of 'Shorts' in relation to YouTube Shorts does not infringe SIL's registered trade marks under s.10(2) or s.10(3) TMA, nor does it amount to passing off. SIL's marks have low inherent distinctive character, and the similarities between Google's signs and SIL's marks are descriptive, not distinctive. There is no likelihood of confusion, dilution, or tarnishing. Most of SIL's marks are valid, but the word mark 'SHORTSTV' is invalid for most goods and services, and other marks are partially revoked for non-use. Google's use is descriptive and, even if not protected by honest practices, does not infringe. SIL's claim fails.

Parties
Claimant: Shorts International Limited; Defendant: Google LLC
Jurisdiction
England and Wales
Judgment Date
31 October 2024
Procedural Posture
Intellectual Property Dispute (trade Mark Infringement, Passing Off, Validity, Revocation) / Final Judgment After Trial
Outcome
Claim dismissed; partial revocation and invalidity declarations granted.
Legal Topics
Trademark Infringement, Passing Off, Trademark Validity, Revocation for Non Use, Distinctive Character, Descriptiveness, Honest Practices
Intellectual Property Trademark Law Trademark Infringement Passing Off Trademark Validity Revocation for Non Use Distinctive Character Descriptiveness +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 7 Authorities cited 22 Party arguments 2 Amounts and remedies 5
Sign in to unlock

Parties

Shorts International Limited

Claimant

Google LLC

Defendant

Procedural Posture

Intellectual Property Dispute (trade Mark Infringement, Passing Off, Validity, Revocation) / Final Judgment After Trial

Legal Issues

  1. 1 Whether Google's use of 'Shorts' in YouTube Shorts infringes SIL's registered trade marks under s.10(2) and/or s.10(3) Trade Marks Act 1994
  2. 2 Whether Google's use amounts to passing off
  3. 3 Whether SIL's trade marks are invalid for lack of distinctiveness, descriptiveness, or customariness

Ratio Decidendi

Google's use of 'Shorts' in relation to YouTube Shorts does not infringe SIL's registered trade marks under s.10(2) or s.10(3) TMA, nor does it amount to passing off. SIL's marks have low inherent distinctive character, and the similarities between Google's signs and SIL's marks are descriptive, not distinctive. There is no likelihood of confusion, dilution, or tarnishing. Most of SIL's marks are valid, but the word mark 'SHORTSTV' is invalid for most goods and services, and other marks are partially revoked for non-use. Google's use is descriptive and, even if not protected by honest practices, does not infringe. SIL's claim fails.

Court Disposition

Claim dismissed; partial revocation and invalidity declarations granted.

Orders

  • The 2018 Marks are not invalid under s.3(1)(b), (c) or (d) but the 383 Mark is invalid for most goods and services.
  • The 2018 Marks are partially revoked as of 5 October 2023 for goods/services beyond 'software for accessing audiovisual entertainment' and 'production, presentation and distribution of films, videos and television programmes'.