Decision: Shorts International v Google [2026] EWCA Civ 668
Court: Court of Appeal (Civil Division)
Judges: Chancellor of the High Court, Stephen Phillips LJ; Falk LJ
Decision: Here
Key issues: Trade Marks; Distinctiveness

Published: 30 June 2026
Authors: Irem Alici

Background

The Court of Appeal’s decision in Shorts International Ltd v Google LLC highlights the limits of trade mark protection for descriptive terms, particularly in the context of digital media services.

Shorts International Ltd (“SIL”) operates the “ShortsTV” channel and produces and distributes short-form audiovisual content. It owns a portfolio of UK trade mark registrations incorporating the word “SHORTS”, including both figurative marks and a word mark, covering audiovisual content, broadcasting and related services.

2021 was the year Google launched its “YouTube Shorts” feature in the UK, offering user-generated, short-form video content designed primarily for mobile viewing. Google used the term “shorts” in a number of ways in connection with this service, including as part of the name “YouTube Shorts” and in various on-platform displays.

SIL alleged that Google’s use of “shorts” infringed its registered trade marks and amounted to passing off. Google denied the claims, arguing in particular that “shorts” is descriptive of short-form video content, and counterclaimed that SIL’s marks were invalid for lack of distinctive character.

At first instance, the High Court rejected SIL’s claims. While certain stylised marks were held to be valid, the word mark “ShortsTV” was largely found invalid. The court also held that Google’s use of “shorts” was primarily descriptive and did not give rise to a likelihood of confusion. SIL appealed those findings.

Issues

The appeal raised a number of interrelated issues concerning both infringement and validity, centred primarily on how the word “shorts” would be understood by the average consumer.

SIL argued that “shorts” would be taken to refer to traditional short films, whereas Google contended that it had a broader, descriptive meaning encompassing short-form video content more generally. This distinction was critical, as it informed whether Google’s use of the term was descriptive and, in turn, whether there was any likelihood of confusion.

The Court also considered whether Google’s use of “shorts” functioned as trade mark use in all contexts, or whether, in some instances, it was merely descriptive. In parallel, the Court had to assess the distinctiveness of SIL’s marks, both inherent and acquired, and the extent to which any distinctiveness affected the scope of protection.

Finally, SIL sought to rely on the enhanced protection available under section 10(3) of the Trade Marks Act 1994, which required it to establish that its marks enjoyed a sufficient reputation in the UK.

Decision

The Court of Appeal dismissed the appeal in full.

A central finding was that the term “shorts” is not limited to traditional short films, but extends more broadly to short-form audiovisual content. As a result, the element common to SIL’s marks and Google’s signs was descriptive in the relevant context.

This significantly narrowed the scope of protection available to SIL. Although there were similarities between the parties’ signs, those similarities related to a descriptive term with low distinctive character. The Court agreed with the trial judge that this pointed away from any likelihood of confusion.

The Court also confirmed that, in certain contexts, Google’s use of “shorts” would be understood as purely descriptive rather than as indicating origin — for example, where it appeared as a label within the platform interface. Even where the term formed part of branding, the overall differences in presentation and context were sufficient to avoid confusion.

SIL’s claim under section 10(3) failed at the outset. The Court held that SIL had not established that its marks enjoyed a reputation among a significant part of the UK public, and therefore did not benefit from enhanced protection.

On validity, the Court upheld the finding that the word mark “SHORTSTV” is descriptive. It was considered to convey no more than short-form content delivered via television or similar media, and therefore lacked distinctive character. SIL’s reliance on acquired distinctiveness was not supported by the evidence, and its proposed limitation excluding “short films” was also rejected.

Commentary

This decision is a clear commercial warning for brand owners operating in crowded, fast‑moving sectors.

In practical terms, it reinforces that descriptive branding offers limited enforceability, even where it has been registered. If the core of a mark describes what the product or service is -rather than who it comes from - it will be difficult to prevent competitors from using similar language, particularly where that language is industry‑standard.

For businesses launching new platforms or features, the case also highlights the importance of naming strategy at the outset. Terms that feel intuitive and consumer‑friendly (such as “shorts”) may be attractive from a marketing perspective, but they are inherently difficult to protect. The result is that competitors can often adopt similar terminology without infringing.

The decision will be particularly relevant to companies in the content, media and tech sectors, where products are frequently categorised by format (e.g. reels, stories, clips, shorts). In these environments, courts are likely to treat such terms as descriptive, leaving limited scope to claim exclusivity.

From an enforcement perspective, the case also underlines the need for strong evidence of market recognition. Reliance on niche audiences, limited distribution, or relatively small viewing figures will not be sufficient to establish reputation or acquired distinctiveness. Businesses seeking broader protection need to be able to demonstrate real penetration into the relevant market.

Overall, the take‑away is straightforward: businesses should not assume that registration alone will secure meaningful protection. Investing in genuinely distinctive branding, or in building clear, widespread recognition, is critical if trade mark rights are to provide real commercial value.