A dispute arose between the Shorts International Limited (“SIL”) and Google for the use of the term “Shorts” (as used in YouTube Shorts). During the course of the hearing in Shorts International Limited v. Google LLC,[i] Google defended successfully its use of the term “Shorts” on its YouTube platform, against the trade mark infringement claims of SIL. The High Court ruled that Google’s use of “Shorts” did not infringe SIL’s registered trade marks or amount to passing off. We will have a brief look at this matter.
Background
SIL operates ShortsTV, which is a television channel dedicated to short films. SIL holds various trademarks. SIL had launched ShortsTV in 2007 as the first TV channel exclusively focused on short films. SIL owned the following trademarks, filed on 20 February, 2018 and added to the register on 5 October, 2018: (“2018 Marks”)
SIL was also the owner of UK registered trade mark no. 3428383 (“the 383 Mark”), being the word mark “SHORTSTV”. (This wordmark was later held invalid, as shall be covered below)
Later in 2020, Google expanded YouTube Shorts, a platform for vertical videos under 60 seconds, similar to TikTok and Instagram Reels. The term “Shorts” is used in various ways by Google on its new product, such as:
- As a descriptor for short-form audiovisual content available on the platform.
- In branding alongside the YouTube name or logo.
- In derivative logos incorporating the term “shorts.”
SIL alleged that each of these uses infringed SIL’s registered trade marks under sections 10(2) and 10(3) of the Trade Marks Act 1994 (of the United Kingdom) and/or amounted to passing off.
Claims
SIL alleged that Google had committed trade mark infringement and passing off, by using the term “shorts” which was in part trademarked by them way back in 2018. Google denied these claims and submitted that there was no infringement or passing off, also contending that SIL’s marks were invalid.
Google denied infringement under both sections 10(2) and 10(3). It raised a defence, that under section 11(2)(b) of the TMA, its use involves a sign that is not distinctive or relates to the kind, quality, or other characteristics of goods and services. Google further asserted that its use complied with honest practices in industrial or commercial matters. Additionally, Google contended that SIL’s registered trade marks were invalid and could be partially revoked for certain reasons.
Google further alleged that, in fact, these 2018 Marks should be partially revoked on the ground that within the period of five years since their registration they had not been put to genuine use in the UK by SIL or with its consent in respect of certain categories of goods and services. It was also alleged that there were no proper reasons for non-use.
Analysis of the Court
The Court analysed the issue broadly in the following manner:
- The meaning of “shorts”, including whether “short films” constitute a recognized category of goods.
- Invalidity of the Marks registered by SIL.
- The existence of any instances of actual consumer confusion while using such marks.
First Question – Meaning of Shorts
SIL had argued “shorts” referred to short films, which they had defined as shorter versions of feature films with narrative structure, plots, and professional production values. SIL cited the Academy of Motion Picture Arts and Sciences’ definition of short films for the Oscars, which was, “a documentary, live action or animated film which is less than 40 minutes in duration.” SIL’s evidence included claims that “shorts” traditionally referred to audiovisual works lasting 2 to 45 minutes, though the term’s usage had evolved to include shorter digital content, without a fixed timeline for this shift.
Google had, however, argued that SIL should not be allowed to monopolise a commonly descriptive term, especially one extensively used in the context of digital entertainment. The Court noted that evidence presented by Google, such as articles and searches between 2018 and 2022, demonstrated the term “shorts” had broader usage. While “shorts” often meant short films, there were numerous examples where it referred to other forms of short-form content, such as online comedy videos, TV shorts, or digital videos on platforms like YouTube. While SIL did not accept all of those instances, it did concede that several were use of “shorts” to refer to materials which were not “short films”.
The Court, therefore, concluded that, as at each of 20 February 2018, 13 September 2019 and June 2021, the term “shorts” included content beyond short films, such as other short-form audiovisual works.
Second Question – Invalidity
Google challenged the validity of SIL’s trademarks under Section 3(1) of the Trade Marks Act 1994 (TMA) on three grounds:
- The marks lacked distinctive character (s.3(1)(b));
- They consisted exclusively of signs or indications designating the kind or characteristics of goods or services (s.3(1)(c)); and
- They consisted exclusively of signs or indications that had become customary in the language or trade practices (s.3(1)(d)).
(Note on the sections:
S.3(1)(b) TMA provides that trade marks shall not be registered if they are “devoid of any distinctive character”.
S.3(1)(c) TMA states that trade marks cannot be registered if they “consist exclusively of signs or indications that designate the kind, quality, quantity, purpose, value, geographical origin, time of production, or other characteristics of goods or services.”
S.3(1)(d) TMA provides that trade marks shall not be registered if they “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”)
Held Valid: For the 2018 Marks, the Court found that the “play symbol” inside the “O” would be understood by the average consumer as indicating a characteristic of the goods, specifically that certain goods could be “played.” However, when considering the word “shorts” together with the “play symbol,” their combination did not consist exclusively of elements that designate characteristics of the goods. As a result, the 2018 Marks were not invalid under Sections 3(1)(b), (c), and (d) of the Trade Marks Act.
Revoked: On non-use, the Court determined that SIL’s trademark registrations for 2018 Marks for “computer software” and “electronic entertainment software” in class 9 and “entertainment services” in class 41 were too broad. Portions of these registrations were revoked to reflect the actual use of the marks in the previous five years.
Revoked: The Court further ruled that the 383 Mark was invalid under Sections 3(1)(b), (c), and (d) of the Trade Marks Act 1994 for most of the goods and services. Regarding Section 3(1)(c), the Court found that both components of “SHORTSTV” were descriptive and that their combination did not create a distinct impression beyond the sum of its parts. The Court also dismissed SIL’s argument that the 383 Mark had acquired distinctiveness through use. SIL’s evidence was insufficient to meet the standard for acquired distinctiveness.
Third Question – Confusion / Infringement
The Court next addressed whether Google infringed the 2018 Marks under Sections 10(2) and 10(3) of the Trade Marks Act 1994. Regarding Section 10(2), the Court found no likelihood of confusion due to the low distinctiveness of the 2018 Marks and the absence of their distinctive combination in Google’s use. The distinctive combination of SIL was use of the word “shorts” with the “play symbol” inside the “O”, however, this was not used by Google.
The Court emphasized the strong recognition of YouTube and less likelihood of confusion, stating, “YouTube is a very well known and long established brand. In my view there is no possibility of substantial numbers of members of the public being misled into believing that YouTube Shorts is a service of SIL.”
Under Section 10(3), the judge concluded that SIL’s trade marks did not have a reputation in the UK, and even if they did, Google’s use of “YouTube Shorts” would not harm that reputation. The judge also noted that SIL itself benefitted from YouTube Shorts as an “excellent marketing tool” and found no substantial evidence of dilution.
The Court noted that there was no evidence of deception, as none of the incidents showed people confusing YouTube Shorts with SIL’s service or believing it was authorized by SIL. As a result, the passing off claim failed.
Judgement
In summary, the Court concluded that the term “shorts” covers more than just short films, including various short-form videos like YouTube Shorts. The Court agreed with Google, stating that while there may be a mental link between SIL and Google, it did not cause any confusion or harm to SIL’s trade mark distinctiveness.
The Court said, “While there are significant similarities between the signs used by Google which include the word “shorts” and SIL’s trade marks, the similarities concern the aspects which are descriptive rather than those which give SIL’s trade marks their (low) distinctive character.”
The Court concluded that Google’s branding would not mislead the public into believing YouTube Shorts was connected to SIL’s ShortsTV, nor would it damage the reputation of SIL’s trademarks. As a result, the passing off claim was rejected.
Conclusion
The court’s decision highlights that common terms, like “shorts,” should not be monopolized through trademarks. Restricting their use hinders competition and stifles innovation, as these terms are widely understood by the public. The only restrictive use would be if YouTube used the distinctive character of SIL’s trademark, which was use of the word “shorts” with the “play symbol” inside the “O”, as can be seen here:
Similar to the provisions of the UK Trade Marks Act, which restrict the registration of descriptive or non-distinctive marks, Indian law under the Trade Marks Act, 1999 also disallows the protection of such marks. Section 9(1)(a) of the Indian Act specifically states that non-distinctive or descriptive marks, which do not differentiate goods or services from others, cannot be registered. Additionally, Section 9(1)(b) further prohibits marks that merely describe the characteristics of goods or services, such as their kind, quality, or intended purpose, from being granted trademark protection.
A few notable decisions are ELGI Ultra Industries Limited v. The Assistant Registrar of Trade Marks,[ii] where the court ruled that the terms “ultra” and “perfect” are highly descriptive and promotional, and thus could not be protected as trademarks. Similarly, in the landmark case of Imperial Tobacco Company of India Ltd v. Registrar of Trademarks,[iii] the court held that “SIMLA” refers to a well-known hill station in India, and its clear geographical meaning led to the rejection of its registration. Therefore, it is possible that even if the case is filed in India, the conclusion of this case is going to be similar.
The effect of this judgement is going to be far-reaching since it will dis-incentivize similar cases in other jurisdictions in the future, and well known brands will feel safer and in control when they use such terms to describe their brand.
End Notes:
[i] Case No: IL-2023-000037, https://www.judiciary.uk/wp-content/uploads/2024/10/SIL-v-Google-approved-judgment.pdf.
[ii] MANU/IC/0062/2008.
[iii] AIR 1968 Cal 582.
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