Google has successfully defended its use of the term ‘Shorts’ on its YouTube platform against trade mark infringement claims brought by Shorts International Limited (SIL). The High Court ruling by Deputy Judge Michael Tappin KC concluded that Google’s use of the word ‘shorts’ does not infringe upon SIL’s registered trade marks nor constitute ‘passing off’.
Background
SIL is a British company which operates ShortsTV, an international television channel dedicated to short films. It owned the trade marks for ‘SHORTSTV’ and ‘SHORTS’. SIL launched ShortsTV in 2007, the first TV channel devoted exclusively to short films. In 2020 Google embarked on the expansion of YouTube Shorts, a platform which focuses on vertical videos that are less than 60 seconds long, much like TikTok and Instagram Reels.
Claims of Trade Mark Infringement and Passing Off
SIL argued that Google’s YouTube Shorts infringed its “SHORTS” trade mark by using a term closely associated with the SIL brand, creating a likelihood of consumer confusion and diminishing the distinctive character of its trade marks. The claim also cited the risk of "passing off," implying that Google’s use could be misinterpreted as a service affiliated with SIL.
Google denied all claims and asserted that the term “shorts” is widely recognised across media formats as describing short form video content. Google 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’s Findings
Judge Tappin agreed with Google’s stance, concluding that the term “shorts” extends beyond short films to encompass various short form video content, such as those on YouTube Shorts. He observed that while there could be a possible ‘link’ in consumers’ minds between the two brands, it does not amount to confusion or damage to SIL’s trade mark distinctiveness.
Judge Tappin noted:
“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.”
Furthermore, he ruled that SIL's trade marks involving ‘ShortsTV’ lacked sufficient distinctiveness among the general public to function as trade marks. Additionally, SIL’s attempt to narrow the trade mark to "short films" was deemed too vague, leading to the invalidation of the mark for some goods and services.
Finally, he added that Google’s branding would not lead the public to believe that YouTube Shorts was associated with SIL’s ShortsTV, nor that Google’s use of the term “shorts” would harm the reputation of SIL’s trade marks. Therefore, the claim of passing off failed.
Implications of the Ruling
SIL’s reliance on “shorts” as a trade mark was limited by the word’s established usage as a descriptor for short form video content. This judgment reminds us of the difficulty of securing exclusive rights to terms widely recognised as descriptive within a particular industry.
The full decision can be found here.