Total Ltd Sues UK YouView Broadband IPTV Service Over Brand Dispute

The subscription-free YouView broadband ISP based TV (IPTV) service, which recently lost a High Court battle with online billing firm YourView (Total Ltd.) over the rights to retain its name, is now officially being sued for trade mark infringement by Total Ltd.

The UK Trade Marks Registry originally rejected YouView’s attempt to secure its brand name on 30th May 2012. The registry described YouView as being “confusingly similar” to YourView, which is despite both firms having almost completely different businesses and customers. The ruling was later upheld in a court of appeal.

At the time YouView, which is chaired by Lord Alan Sugar and has already spent millions on marketing its product under the YouView brand, said it had “no intention of changing its name” and warned that a “number of on-going legal actions” would first have to be settled in the courts. Now YourView has made the first move to finish off the YouView brand for good.

Stuart Baikie, Managing Director of Total Ltd, said:

“Despite the recent vindication of our position in the appeal proceedings we believe that YouView has continued to act without regard to our registered mark and business interests. We have had no choice but to issue infringement proceedings and we are confident of success.”

Paul Gordon, Partner at Willans LLP Solicitors, said:

“The YOUR VIEW trade mark has been registered to Total Ltd. since 20 November 2009, a fact that YouView were fully aware of when attempting to register their mark. On Friday 9 November, Mr Justice Floyd dismissed YouView’s appeal and took time to point out that not only was the hearing officer in the Trade Marks Registry right in her initial findings when she decided against registration of the ‘youview’ mark with certain goods and services, but that he agreed that there was similarity of the marks and similarity of the goods and services.”

Total Ltd. is claiming that YouView is in breach of Section 10 (2) of the Trade Marks Act 1994 because they have continued to use the name despite being told not to. Curiously Total Ltd. state that the trade mark has been “used in relation to goods and services which are identical or similar to those for which Total have registered their mark“; even though on the surface both services appear to be completely different.

The claim that Total has issued against YouView is for financial relief but also for an injunction which, if granted, would prevent YouView from using the ‘youview’ mark in a way that infringes Total’s trade mark. In other words, YouView, you’re fired!.. almost.