Google wins High Court trade mark battle over YouTube Shorts service

Google has won a High Court battle with a television company over the use of the word “shorts” on YouTube.

Shorts International Limited (SIL), which runs a TV channel dedicated to short films, claimed that Google infringed its trade marks by launching the YouTube Shorts service in 2020.

The platform allows users to share videos of up to 60 seconds online and on the YouTube app, but lawyers for SIL claimed that the word “short” does not “stretch” to include the media format.

Google denied the claims at a trial in London earlier in October, with its barristers arguing that “short” covers a wide range of productions and that the SIL trade marks should be revoked.

In a judgment on Thursday, Michael Tappin KC, sitting as a deputy High Court judge, ruled that Google had not infringed any of SIL’s trade marks.

He said: “The meaning of the word ‘shorts’ extended beyond ‘short films’ and included other short-form audiovisual content.

He continued: “While the similarities between Google’s signs and SIL’s trade marks will give rise to a link in the minds of the limited group of UK consumers amongst whom SIL’s trade marks have a reputation, Google’s uses of signs including the word “shorts” will not cause damage to the distinctive character or repute of SIL’s trade marks.”

He added: “Google’s signs do not misrepresent its service as being provided by SIL or in some way authorised by SIL.”

The trial in London was told that SIL operates an international TV channel called ShortsTV, launched in 2007, which its barrister, Simon Malynicz KC, said was “the first, and now the largest and best-known, TV channel devoted exclusively to short films”.

The channel’s content can be watched on various platforms, including YouTube, and it owns the trade marks for “SHORTSTV” and “SHORTS” in “word and/or device form”.

Google then launched the YouTube Shorts service in 2020, which became available in the UK the following year, but SIL claimed that the service caused “a risk of confusion” with its trade marks.

But in her written arguments, Lindsay Lane KC, for Google, said that there was “extensive evidence” that the word “is not limited to cinematographic films, but encompasses all forms of short-form entertainment content whether on film, video, television or online”.

She added that it was “common sense” that a company could not trade mark a “purely descriptive word or words that are widely used in a particular field”, and that SIL’s trade marks had not been infringed and were “invalid”.

The judge found that one of SIL’s trade marks was invalid, adding that none of Google’s uses of the word “shorts” would cause a “likelihood of confusion”.

He 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.”