Trade Marks - Shorts International v Google
This was an appeal by Shorts International Ltd. ("Shorts") against the order of Michael Tappin KC sitting as a deputy judge of the High Court following his judgment in Shorts International Ltd v Google LLC [2024] EWHC 2738 (Ch) (31 Oct 2024). There was also a cross-appeal by Google LLC ("Google"). The appeal and cross-appeal came before the Chancellor, Sir Colin Birss, Lord Justice Stephen Phillips and Lady Justice Falk on 10 and 11 March 2026. They handed down their judgment in Shorts International Ltd v Google LLC [2026] EWCA Civ 668 on 25 May 2026. the late Spring Bank Holiday.
The Marks
Shorts is the registered proprietor of the following marks for goods and services in classes 9, 38, and 41:
It also registered the word SHORTSTV as a trade mark for goods and services in classes 9, 38, 41, and 42 under trade mark number 3428383 ("the 383 Mark").
YouTube Shorts
Google launched its YouTube Shorts service in the UK in 2021. These were user-generated videos under 60 seconds in "vertical" format corresponding to what could be seen on a mobile phone. Google used the word "shorts" in connection with that service as a standalone word, in the name "YouTube Shorts" itself, and in the various graphical forms that appear above.
The Dispute
Shorts complained that each and every one of Google's signs infringed its marks under s.10 (2) and (3) of the Trade Marks Act 1994. Google denied infringement and relied on s.11 (2) (b). Google counterclaimed for the revocation of Shorts's marks for non-use pursuant to s.46 (1) and for the marks to be declared invalid pursuant to s.47 (1) on the ground that they lacked inherent or acquired distinctive character within the meaning of s.3 (1). Shorts denied the lack of inherent distinctive character and alleged the marks had acquired distinctive character through use. It also argued that to the extent the marks lack distinctive character for some goods or services, it could be remedied by limiting the specifications of goods and services to include the words "save for short films" in relation to classes 9, 41, and 42. Shorts also accused Google of passing off.
Mr Tappin's Judgment
Mr Tappin found as follows at para [293] of his judgment:
"i) The 2018 Marks are not invalid under s.3 (1) (b), (c) or (d) but the 383 Mark is invalid in so far as it is registered in respect of the goods and services indicated in Annex 3. [Shorts’s] proposed amendments do not cure that invalidity.
ii) The 2018 Marks should be revoked as of 5 October 2023 in so far as they are registered for “computer software” and “electronic entertainment software” extending beyond “software for accessing audiovisual entertainment” and in so far as they are registered for “entertainment services” extending beyond the remainder of the class 41 registration.
iii) The claim under s.10 (2) fails.
iv) The claim under s.10 (3) fails.
v) Had there been a likelihood of confusion or significant detriment to the distinctive character or repute of [Shorts’s] Marks, the defence under s.11 (2) (b) would have failed.
vi) The claim in passing off fails."
The Appeal
Mr Tappin granted Shorts permission to appeal on some grounds and Lord Justice Arnold granted it permission to appeal on other grounds. Mr Tappin also granted Google permission to cross-appeal on validity and non-use. Permission was not sought in respect of passing off and revocation.
Grounds
Grounds
Shorts advanced 12 grounds of appeal:
- Ground 1 related to the meaning of "shorts";
- Grounds 2-3 challenged the invalidity of the 383 mark for some goods and services;
- Grounds 4-10 challenged the findings of non-infringement under s.10 (2); and
- Grounds 11 and 12 addressed infringement under s.10 (3).
- Google Grounds 1-4 contended that the 2018 marks were invalid under s.3 (1) (b), (c) and (d);
- Google Ground 5 was that the 383 mark should be held invalid for all goods and services; and
- Google Ground 6 contended that the partial revocation for non-use of the 2018 Marks did not go far enough and that they ought to have been revoked for all goods and services.
- Respondent's Notice point 1 challenged aspects of the reasoning which formed part of the conclusion that the SHORTSTV 2018 Marks were valid and had distinctive character, in order to bolster Shorts's appeal against the conclusion that the 383 Mark (the word SHORTSTV alone) was invalid.
- Respondent's Notice point 2 was a counterpart of Shorts's Ground 3 but applied to the first 4 marks.
Appeal on S.10 (2)
S.10 (2): The Relevant Legal Principles
The Chancellor set out s.10 (2) of the Trade Marks Act 1994:
"A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
"A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
Referrring to para [26] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd [2023] FSR 18, [2023] 4 All ER 190, [2023] WLR(D) 199, [2023] EWCA Civ 454, [2023] Bus LR 1097, he said that to establish infringement under s10 (2), it must be the case that:
(i) a sign was used by a third party within the relevant territory;
(ii) the use was in the course of trade;
(iii) it was without the mark proprietor's consent;
(iv) it was of a sign which is at least similar to the mark;
(v) it was in relation to goods or services which are at least similar to those for which the mark is registered; and
(vi) it gave rise to a likelihood of confusion.
He noted at para [22] of his judgment that there was no dispute that conditions (i) to (iv) were satisfied. The issues were whether Google's use was in relation to goods or services, and gave rise to a likelihood of confusion (i.e. (v) and (vi)). He a[2021] ETMR 57, [2021] EWCA Civ 1207. He explained that "use in relation to goods and services" meant use used for the purpose of distinguishing the goods or services in question, that is to say, use as a trade mark as such as Lord Justice Arnold had said in Montres Breguet v Samsung [2023] EWCA Civ 1478 at para [83]. For use to give rise to a likelihood of confusion, it must cause the average consumer to:
- mistake the sign for the mark (so-called "direct confusion");
- believe that the goods and services denoted by the sign come from the same undertaking, or an economically linked undertaking, as that responsible for the goods and services denoted by the mark ("indirect confusion") or
- vice versa ("wrong way round confusion") as Lord Justice Arnold stated between paras [10] and [14] of Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA Civ 1207.
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
Ground 1
Mr Tappin said at para [239] of his judgment:
"It seems to me that [Shorts’s] best case is based on the 615/649 Marks (which do not include “TV”) as registered for goods and services identical to those for which Google has used its composite signs (such as “video recordings” and “presentation of videos”) and on Google’s use of the composite sign shown below."
However, the deputy judge held in the next paragraph that the use of that sign did not give rise to a likelihood of confusion with those marks. That was because the word "shorts" was descriptive of the material in question and the average consumer would appreciate that any similarity between the marks and the sign arose from the fact that the marks had been registered for, and the sign was being used in relation to, goods and services for which the word "shorts" indicated characteristics.
Ground 5
Shorts's 5th ground was that Mr Tappin had wrongly regarded some of the signs on which it relied as purely descriptive and thus non-infringing. The Chancellor observed that this was a challenge to the para [224] of the deputy judge's judgment. Mr Tapping had held that the average consumer would understand “Shorts” was being used purely descriptively to refer to the type of material rather than as a trade mark. Thus, it was not used “in relation to goods or services”.
An example of such descriptive use appears in the following webpage:
This page would appear whenever a user clicked the "Shorts" tab on the menu just below the ball in the top left-hand corner of the webpage. Shorts had argued that that was an example of the use of the word "Shorts" as a trade mark. The deputy judge rejected that contention. He found that such use was generic and similar to other tab headings, such as "Home" and "Videos". The Chancellor held that such a finding had been open to Mr Tappin.
The other example on which Shorts relied was the menu on the mobile app where the choices were "All Shorts", "Video", "Unwatched" and "Watched". Sir Colin said that the same applied to that example.
Ground 4
Ground 4 was that the deputy judge had omitted to compare the registered mark with a sign comprising the word "Shorts" alone. The Chancellor said that success on Ground 5 was a prerequisite for success on Ground 4 because Shorts had relied on the same examples. As Ground 5 had failed, Ground 4 did not arise.
Ground 6
Shorts submitted that in the context of s.10 (2), the deputy judge "wrongly allowed the criterion of distinctiveness to pollute his comparison of the Marks". It argued that taking descriptiveness into account in the comparison of the registered mark with the defendant's sign was contrary to authority and wrong. The Chancellor accepted that distinctiveness should not be given inappropriate weight in the overall assessment, but only in the sense that no factor should be given inappropriate weight. He could not accept that mentioning it when comparing mark and sign meant that it had been given undue or inappropriate weight, as a form of double-counting. He held that Mr Tappin had been right and entitled to take distinctiveness into account in the global assessment. Reading the relevant passages in the judgment as a whole, it was clear that he had not given it undue or inappropriate weight.
Shorts submitted that in the context of s.10 (2), the deputy judge "wrongly allowed the criterion of distinctiveness to pollute his comparison of the Marks". It argued that taking descriptiveness into account in the comparison of the registered mark with the defendant's sign was contrary to authority and wrong. The Chancellor accepted that distinctiveness should not be given inappropriate weight in the overall assessment, but only in the sense that no factor should be given inappropriate weight. He could not accept that mentioning it when comparing mark and sign meant that it had been given undue or inappropriate weight, as a form of double-counting. He held that Mr Tappin had been right and entitled to take distinctiveness into account in the global assessment. Reading the relevant passages in the judgment as a whole, it was clear that he had not given it undue or inappropriate weight.
Ground 7
This ground of appeal contended that it was "rationally insupportable to find that the placement of the play symbol (in one of the uses complained of) was sufficient to dispel confusion where the goods/services were identical, the signs contained no other words, and both featured a red and white play symbol, albeit in a different position." In the Chancellor's judgment, Mr Tappin had been right that the word "shorts" and the play symbol were not in themselves distinctive. His reasoning was not rationally unsupportable. His conclusions were open to him.Grounds 8 to 10
None of those grounds raised points that had not already been addressed, and there was no need to consider them further.
Conclusion on s.10 (2)
Sir Colin dismissed Shorts's appeal under s.10 (2).
Appeal on s.10 (3)
S.10 (3): The Relevant Legal Principles
The Chancellor set out the sub-section as follows:
"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a) is identical with or similar to the trade mark,
...
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a) is identical with or similar to the trade mark,
...
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
He referred to para [55] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd [2023] FSR 18, [2023] 4 All ER 190, [2023] WLR(D) 199, [2023] EWCA Civ 454, [2023] Bus LR 1097:
"A proprietor of a registered trade mark alleging infringement under ....... section 10 (3) of the 1994 Act must show that the following requirements are satisfied:
"A proprietor of a registered trade mark alleging infringement under ....... section 10 (3) of the 1994 Act must show that the following requirements are satisfied:
(i) the registered trade mark must have a reputation in the relevant territory;
(ii) there must be use of a sign by a third party in the relevant territory;
(iii) the use must be in the course of trade;
(iv) it must be without the consent of the proprietor;
(v) it must be of a sign which is identical with or similar to the trade mark;
(vi) it must be in relation to goods or services;
(vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say,
(a) detriment to the distinctive character of the trade mark,
(b) detriment to the repute of the trade mark, or
(c) unfair advantage being taken of the distinctive character or repute of the trade mark; and
(ix) it must be without due cause."
The Chancellor considered the requirement that the registered trade mark must have a reputation in the relevant territory. He said that the CJEU set out the legal principles on reputation in C-375/97 General Motors Corp v Yplon SA [2000] RPC 572, [1999] EUECJ C-375/97, [1999] ECR I-5421:
"[24] The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.
[25] It cannot be inferred from either the letter or the spirit of Article 5 (2) of the Directive that the trade mark must be known by a given percentage of the public so defined.
[26] The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.
[27] In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."
Ground 11
The deputy judge held that Shorts's marks did not have a reputation in the UK and that the claim under s.10 (3) failed on that basis alone. Even if the marks did have a reputation in this country, the use of Google's signs would not have been detrimental to their repute.
"First that the facts support a finding of reputation - at least for consumers of short films (whatever that category amounts to) and second, if so, that the judge erred in holding that that category was not a proper one."
As Shorts had failed to establish a reputation in the UK for the purpose of s. 10 (3), the appeal on Ground 11 had to be dismissed.
Appeal on Invalidity of 383
Ground 2 challenged the deputy judge's assessment of the distinctive character of the 383 Mark, contending that it was inherently distinctive or ought to have been held to have acquired distinctive character through use. Ground 3 challenged his rejection of Shorts's proposed amendment.Invalidity - Relevant Legal Principles
The Chancellor's starting point was s.3 (1) of the Trade Marks Act 1994:
"The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
"The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
Mr Tappin's Findings on Invalidity
Mr Tappin considered the validity of the word mark at the same time he considered the validity of the word and device marks 615, 649, 656 and 664 that appear above. He considered the combination of the word "shorts" and the play symbol rendered red and located within an "O". He held that the way those elements were combined did not consist exclusively of signs which may serve to designate characteristics of those goods. The overall impression created by the combination went beyond the mere juxtaposition of two descriptive indications. It followed that the objection to the combined word and device marks under s.3 (1) (c) failed.
Lastly, he considered the proposed limitation to exclude "short films". He rejected the proposal for the following reasons:
- There was no clear and consistent meaning of "short films".
- Even if "short films" was sufficiently clear, the limitation did not go far enough because "shorts" was wider than "short films",
- The class for which the mark was descriptive was wider than would be excluded by the limitation on any view.
The Appeal on Ground 2
In para [137], the Chancellor said: "it is quite obvious that the judge reviewed the evidence in detail, made no error doing so and came to conclusions which were open to him on that evidence."The Appeal on Ground 3
On the proposed amendment, he said that the deputy judge was plainly right to refuse the limitation on the basis that "short films" was not a sufficiently clear limitation. Also, as ground 1 had failed, Mr Tappin had been right to say that the amendment did not go far enough.
Google's Cross-Appeal
In oral argument, Google said that its cross-appeal would apply only if it were found to have infringed Shorts's marks. As Shorts's appeal had failed, there was no need to consider it further.Comment
This is an extraordinary case for several reasons. It considered the registrability of "figurative figleaf" marks and how they could be infringed under s.10 (2). Notwithstanding Mr Justice Arnold's observation that establishing a reputation is not a particularly onerous obligation, this case provides an example of a mark without a reputation for the purposes of s.10 (3). There is useful guidance on amending a trade mark specification to overcome an invalidity objection. Anyone wishing to discuss this case should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form at any time.
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