See Fieldfisher’s blog post on the first instance decision: Google successfully defends trade mark infringement and passing off claims related to “YouTube Shorts”. SIL sought to appeal most of the judge’s findings at first instance.
Meaning of “shorts”
A key issue was the meaning of “shorts”. SIL argued this referred narrowly to “short films” (i.e. productions like feature films but shorter), such that Google’s use for user‑generated videos was not descriptive in the same way. The Court rejected this, agreeing with the trial judge that “shorts” would be understood broadly as short‑form audiovisual content. On that basis, the judge had been entitled to treat the common element “shorts” as descriptive, and to conclude that the similarity between the marks and Google’s signs would be understood as arising from that descriptive meaning.
YouTube’s use of “shorts”
The Court also upheld the finding that certain uses of “Shorts” by Google were not trade mark use. Even where used alone (e.g. within the YouTube interface), the term would be seen as describing content rather than indicating origin. The Court of Appeal held that, in context, these uses would be understood by the average consumer as descriptive labels indicating the type of content, rather than indicating origin. The fact that “Shorts” was also the name of the service did not mean that every instance of the word constituted trade mark use.
Global assessment analysis
SIL argued that the judge made an error by taking descriptiveness / distinctiveness into account when comparing the marks, rather than confining it to the overall global assessment. The Court of Appeal rejected this and held that the judge had properly conducted a structured global assessment, and was entitled, when comparing the marks and signs, to recognise that their similarities arose from descriptive elements rather than from the features that gave the marks their distinctive character.
Imposing strict rules about where particular considerations may be taken into account in the likelihood of confusion analysis risks “creating the possibility of finding foot faults by trial judges in order to support appeals against what are, in truth, evaluative conclusions” and undermining the flexibility in the global assessment. Ultimately, the limited distinctiveness of SIL’s marks came from the specific combination of elements (including the placement of the play symbol within the “O”), which was not reproduced in Google’s signs.
Evidence of reputation
SIL’s reputation claim failed due to what the Court described as “paper thin” evidence. The material did not establish recognition by a significant part of the relevant public.
Validity of the “ShortsTV” mark
SIL also challenged the finding that its word mark for ShortsTV was invalid. The Court of Appeal upheld the judge’s findings on invalidity because “ShortsTV” did not create any distinctive impression beyond its descriptive elements, SHORTS and TV. The Court also found that there was no evidence that a significant proportion of the public recognised the mark as indicating origin, therefore no acquired distinctiveness.
SIL’s proposed amendment “save for short films” in the specification was rejected because:
1. short films could not be precisely defined;
2. the exclusion of the actual goods and services from the specification was impermissible; and
3. “shorts” is wider than “short films” and so the class for which the mark is descriptive was wider than what would be excluded by the limitation on any view.
Google’s cross-appeal was not considered as Google successfully defeated all of SIL’s appeal grounds.
The decision reflects the Supreme Court’s guidance in Iconix v Dream Pairs [2025] UKSC 25 that appellate courts should be slow to interfere with first instance evaluative findings on similarity and confusion, absent clear error or irrationality (see Fieldfisher’s article on that case here: Now the shoe is on the other foot – Dream Pairs ultimately prevails in trade mark battle with Umbro).
The Fieldfisher team working on this appeal was led by partner Nick Rose and consisted of Verity Ellis (Director), Charlotte Fleetwood-Smith (Senior Associate) and Fiona Sellers (Associate). The counsel team included Lindsay Lane KC and Jessie Bowhill KC (both from 8 New Square).
