Lawyers warn YouView over YouTube trademark risk
The YouView digital TV platform, which is a collaboration between the BBC, BT and others, could be vulnerable to a trademark challenge from YouTube, according to a leading law firm.
On Friday, Beachcroft LLP said that the branding of YouView — previously known as Project Canvas — was "likely to fall foul of YouTube's trademarks". The law firm, which has a dedicated intellectual-property division, added that the BBC and its partners were "reckless" to launch a major brand that risks a legal battle with the likes of Google, the owner of YouTube.
"Given YouTube's massive user base worldwide, it's already a household name. If YouTube chose to, they could block the YouView launch in its tracks," Beachcroft intellectual property partner Robin Fry said in the statement.
How the YouView interface will look Photo credit: PA/Geoff Caddick
YouView, a collaboration between the BBC, ITV, Channel 4, Channel Five, BT, TalkTalk and Arqiva, will be the web-connected successor to Freeview. It combines the main terrestrial and free digital channels into an iPlayer-like view-on-demand service that runs through a set-top box. The YouView brand name was announced on 16 September, after the Office of Fair Trading gave its approval to Project Canvas in May. The service is scheduled to launch in 2011.
"There's no doubt that the use of 'You' coupled with the unusual capitalised character in the middle of the word means that many consumers will think there's a connection between the two," Fry said. "The BBC consortium are playing a dangerous game by trading on YouTube's brand."
Fry noted that YouTube has seven trademark registrations in the UK and Europe, and that YouView quietly filed for seven similar trademarks in April through the name of a private individual, Sarah Eales. He also pointed out that those registrations have, according to the UK Intellectual Property Office website, attracted opposition. The deadline for responses to the applications has been extended to late October as a result.
"Trademark owners have rights to prevent the use by others of similar marks where either there exists the likelihood of confusion on the part of the public, or alternatively where the use without due cause [by] another takes advantage of, or is detrimental to, the distinctive character or the repute of the trademark," Fry said.
Speaking to ZDNet UK, Fry questioned whether, if YouTube did not exist, the BBC would have come up with the name 'YouView' for its own service. "If YouView was a laundry service, it wouldn't matter, but it's internet-streamed television," he said. "If Google didn't bring action against YouView, there's also a question over whether they'd have problems with the YouTube trademark in relation to bringing action against other people. You want to stop people treading on your territory."
ZDNet UK has asked Google whether it might sue YouView over its name, but the company refused to comment. The consortium commented in an email to ZDNet UK that it was not aware of any opposition from YouTube and maintaining that "the trademarks are not in any way confusingly similar".