UPDATE Total Ltd Win UK Trade Mark Infringement Case Against YouView

The High Court in London has today ruled that YouView, which offers a subscription-free broadband based TV (IPTV) service via retail and through ISPs like BT and TalkTalk, infringes upon a trade mark (YourView) owned by online billing firm Total Ltd.

Readers with a long memory for such developments might recall that the UK Trade Marks Registry originally rejected YouView’s attempt to secure its brand name on 30th May 2012 by describing the service as being “confusingly similar” to YourView, which is despite both firms having very different businesses and customers.

Naturally YouView, which has already spent millions marketing its product alongside their name and is a joint venture involving the BBC, ITV, Channel 4, Channel 5, BT, TalkTalk and Arqiva, said it had “no intention of changing its name” and the case ended up in the courts (here). But sadly YouView’s bid failed and the High Court has now ruled against its claim.

As a result Total Ltd. now intends to apply for an injunction against the use of the YouView mark by YouView TV Ltd. On top of that they’ll also be seeking a financial payment and recovering of their legal costs.

Lorrin White, Managing Director of Total Ltd., said:

“As a growing business, Total has always taken the protection of its intellectual property rights very seriously. I am delighted that our determination – and considerable investment – in doing so has resulted in the Courts finding in our favour once again. Whilst Total may not compare to YouView in terms of size, we both operate in the same industry space.

We protect our rights to brand ownership and wholeheartedly defend those rights – as any business should – otherwise we would never have registered our marks in the first place. Our integrated YourView products are core to the long term strategy of Total. We are a business that respects our partners, competitors and the wider industry, but YouView have persisted in their infringement of our registered mark, leaving us no option but to take action through the courts.”

Paul Gordon, Litigation Partner at Willans LLP, added:

“This is the most significant of the three wins that Total has obtained over YouView. I think Total has shown great courage and principle in pursuing YouView to trial. Total’s rights were plainly infringed and it had to stand firm against a much larger and better-funded opponent.

The judgment of Mr Justice Sales has vindicated Total’s position. It shows that the Courts of this country will protect parties against businesses such as YouView who infringe intellectual property rights. YouView were made well aware of Total’s rights before they launched the service under the infringing name yet they chose to launch it under that name regardless.”

The full ruling, which will no doubt make for grim reading in camp YouView, can be read here. YouView will now have to change their name, ideally without picking something that clashes so closely with another operator.

UPDATE 3:43pm

A spokesperson for YouView has confirmed to ISPreview.co.uk that they yet again plan to appeal, “We plan to appeal against the court’s decision, as we maintain there is no confusion between our consumer-facing TV service, YouView, and the business-to-business billing platform, Yourview, provided by Total Ltd.”