Shorts International Limited (Appellant) v Google LLC (Respondent)

Permission to Appeal application lodged

Case summary
Permission to Appeal
Previous proceedings

Case summary

Case ID

UKSC/2026/0104

Parties

Appellant(s)

Shorts International Limited

Respondent(s)

Google LLC

Issue

How should distinctiveness of a mark be considered in the assessment of likelihood of confusion under s10(2) of the Trade Mark Act 1994?

Facts

The Appellant is a short film company known as Shorts International Ltd (“SIL”). SIL is the proprietor of five registered trade marks. Four marks were registered on 5 October 2018 for goods and services in classes 9, 38, and 41. A further mark was registered on 6 December 2019 for goods and services in classes 9, 38, 41, and 42. These marks are different variations of the word “SHORTS” and “SHORTSTV”. The Respondent, Google LLC (“Google”), runs the online platform YouTube. In 2021 Google launched a short form content service available on YouTube called “Shorts”. The Appellant contends that YouTube’s Shorts service amounts to an infringement of their registered trademarks under s10(2) the Trade Mark Acts 1994 (“TMA 1994”). Google denied infringement under s10(2) and also relied on a defence under s11(2)(b) of the TMA 1994, on the basis that its uses were of a sign which was not distinctive and were in accordance with honest practices in industrial or commercial matters. Google also advanced a counter claim in the High Court against all SIL’s marks on the basis of allegations of a lack of inherent or acquired distinctive character under s3(1) of the 1994 Act. The High Court found that none of Google’s uses of signs, including the word “shorts”, gave rise to a likelihood of confusion as to origin under s10(2) of the 1994 Act. While there are significant similarities between the signs, the similarities concern aspects which are descriptive rather than those which give SIL’s trade marks their distinctive character. SIL appealed most of the High Court Judge’s conclusions, save for passing off and the partial revocation of the 2018 Marks. The Court of Appeal dismissed the Appeal, and it was noted that in his assessment of the likelihood of confusion the judge reached a “nuanced view of similarity” which CJEU case law did not prohibit. The core question of law which the applicant wishes the Supreme Court to consider is how “distinctiveness” of a mark should be considered under the test for confusion under s10(2).