Lengthy trademark battle YourView v YouView

The £100m BT and TalkTalk-backed set-top box venture YouView may be forced to change its name and undergo a costly rebrand after losing a lengthy trademark battle against Cheltenham-based telecoms provider Total.

The row dates back to 2010, when YouView applied for its own trademark. Total challenged the application on the basis it had been awarded the trademark relating to YourView months earlier. The minnow emerged victorious from an Intellectual Property Office hearing in 2012 however YouView continued to infringe Total’s trademark leading to the High Court clash.

In its written judgment, the court said there was “a real possibility” the two services could be seen as competitors and, “through continued development of the marketplace and what they seek to offer,” it’s likely the public will become confused in the future about which company is offering specific services.

Lorrin White, the company’s managing director said: “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.”

YouView were made well aware of Total’s rights before they launched their service under the infringing name but decided to ignore all of the warning signs and continued to launch it under that name regardless.

Perhaps unsurprisingly, the consortium of broadband providers and broadcasters are unwilling to accept the decision without a fight as they are undoubtedly aware of how damaging the potential rebrand could be on their business. Its shareholders, which as well as BT and TalkTalk include the BBC, ITV, Channel 4, Channel 5 and Arqiva, have spent millions marketing the brand, which was conceived as a successor to Freeview. Its advertising campaign in autumn alone cost more than £10m.

A spokesman said: “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.”

Total says it’s now seeking an injunction against YouView to prevent the name from being used any further. It will also be asking for financial payment and legal costs, “among other remedies.”

Harry Jeffries