A & E Television Networks Llc and Another v Discovery Communications Europe Ltd
| Jurisdiction | England & Wales |
| Judge | Peter Smith J,THE HONOURABLE MR JUSTICE PETER SMITH |
| Judgment Date | 01 February 2013 |
| Neutral Citation | [2013] EWHC 109 (Ch) |
| Docket Number | Case No: HC10C03615 |
| Court | Chancery Division |
| Date | 01 February 2013 |
[2013] EWHC 109 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Rolls Building, Fetter Lane, London, EC4A 1NL
The Honourable Mr Justice Peter Smith
Case No: HC10C03615
Mr James Mellor QC & Ms Lindsay Lane (instructed by SNR Denton UK LLP) for the Claimants
Mr John Baldwin QC & Miss Charlotte May (instructed by Burges Salmon LLP) for the Defendant
Hearing dates: 11, 12, 13, 16, 17, 18, 19, 20 & 23 July and 11 December 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
INTRODUCTION
This case concerns the use of a television channel name DISCOVERY HISTORY which the Claimants contend amounts to trade mark infringement and passing off by virtue of their rights in connection with the television channel name HISTORY (formerly known as THE HISTORY CHANNEL) which was used on an increasing scale allegedly in the UK for 15 years before the launch of DISCOVERY HISTORY in October 2010. There is also a Counterclaim for invalidity of the trade marks.
The First Claimant is a Delaware company. It has a UK subsidiary A & E Television Networks (UK) Ltd who, together with BSKYB History Ltd operates the Second Claimant AETN UK which is a private limited company and is the Second Claimant. In this judgment the Claimants are referred to collectively as "AETN" hereafter save where necessary to distinguish them.
AETN broadcast (inter alia) two cable and satellite channels in the UK now known as HISTORY and MILITARY HISTORY. AETN contends that they have an extensive reputation and goodwill in the UK. HISTORY (which was known as the HISTORY CHANNEL from November 1995 to November 2008) is apparently the second most watched channel of all the pay TV factual channels. The First Claimant is the registered proprietor of a number of trade marks including the word mark THE HISTORY CHANNEL.
The Defendant ("Discovery") also broadcasts cable and satellite television channels in the UK. On 7 th November 2010 it changed the name of one of its subsidiary channels from DISCOVERY KNOWLEDGE to DISCOVERY HISTORY having announced an intent to do so on 1 st October 2010.
The Defendant's primary channel DISCOVERY or THE DISCOVERY CHANNEL is the most watched of the pay TV factual channels. Thus DISCOVERY and HISTORY are the top two documentary channels and each of the businesses regards the other as its principal competitor.
AETN'S CASE
AETN's case is that the name DISCOVERY HISTORY has caused and will continue to cause deception amongst members of the public who will believe that this channel is connected with HISTORY. The Claimants assert that the reputation of HISTORY is such that the addition of the name DISCOVERY is not sufficient to dispel deception.
Thus the Claimants are in effect contending a right in respect of the word HISTORY. They say that the word HISTORY whilst it has a descriptive meaning does not provide DISCOVERY with a defence.
BACKGROUND
The dispute arose with the announcement on 7 th October 2010 of Discovery's plan to rename its channel which was widely publicised in the industry press. As a result AETN immediately between 10 th–13 th October 2010 conducted a pilot " questionnaire exercise" (so described in AETN's opening paragraph 9) to ascertain whether the proposed new name would be likely to cause deception amongst members of the public. The results of this questionnaire exercise were asserted to be positive. Accordingly having received a negative response to a letter before action AETN issued the present proceedings on 5 th November 2010.
The claims are twofold. First there are claims in passing off in respect of the use of the names HISTORY, THE HISTORY CHANNEL and MILITARY HISTORY.
Second AETN claims that the following trade marks are infringed:-
i) UK Trade Mark No. 2,308,512 for the word mark THE HISTORY CHANNEL registered as of 21 August 2002 in class 38 in respect of cable and television broadcasting services; and in class 41 in respect of education and entertainment services, all for radio or television; production and distribution of radio and television programs and broadcasts; provision of information relating to television and radio programs, entertainment and education; publication of magazines, books, texts and printed matter;
ii) Community Trade Mark No. 5,378,732 for the word mark THE HISTORY CHANNEL registered as of 12 October 2006, inter alia, in class 9 in respect of sound and video tapes, cassettes, discs and records; in class 16 in respect of printed matter; periodical publications, books, program guides, program transcripts, photographs, posters, stationery, instructional and teaching materials (except apparatus); in class 38 in respect of cable television, radio and satellite broadcasting services; and in class 41 in respect of educational and entertainment services, including the production and/or distribution of television and cable television programs; computer on-line services, namely providing education and entertainment materials by means of the global computer network;
iii) Community Trade Mark No. 7,150,766 for a mark comprising the word HISTORY and a device consisting of the letter H as follows:
That mark was registered as of 11 th August 2008, inter alia, in class 9 in respect of audio and video recordings on tape, disc, records, DVDs, CDs, cassettes or other recording media; digital downloads; in class 16 in respect of books, magazines, newsletters, educational materials, printed matter; in class 38 in respect of communication services; cable, television, digital television, satellite, Internet and radio broadcasting services; transmission services, namely transmission to mobile devices, computer networks, video-on-demand, podcast and webcast services; online discussion boards; and in class 41 in respect of education and entertainment services, including cable and television programming; educational and entertainment services, including the production and/or editing and/or distribution and/or presentation of programs for television, cable television, digital television, satellite television and radio; entertainment and educational services in the nature of multimedia programming distributed via various platforms across multiple forms of transmission media in the field of history, historical settings, historical dramas and historical subjects and individuals and information regarding same provided via a global computer network; television program syndication; providing newsletters in the field of history, historical settings, historical dramas and historical subjects and individuals via email; providing online games.
For comparison I include a sample of Discovery's logo.
AETN's complaint relates primarily to the use of the name DISCOVERY HISTORY for Discovery's television channel and all the various different usages that entails including the logo and the abbreviation DISC. HISTORY which is used on the Sky EPG (electronic programme guide), to identify the channel.
Discovery defends the Claim and in its Defence served 7 th December 2010 included a Counterclaim to invalidate the trade marks. At a CMC on 8 th April 2011 AETN sought permission from Mann J in accordance with the current procedure to conduct a further "full" questionnaire exercise. At this hearing Discovery made various criticisms of AETN's proposed exercise but these were rejected by the Judge who gave AETN permission to administer the questionnaire in the form proposed and to serve statements from the witnesses identified from the response of such questionnaires. Despite that there was much debate before me over the results obtained as a result of the questionnaire exercise carried out by AETN. Further following the conclusion of the case the Court of Appeal in Marks & Spencer Plc v Interflora Inc [2012] EWCA Civ 1501 delivered a comprehensive judgment on 20 th November 2012 in respect of the use of such material in trials for passing off and/or infringement of trade marks. As a result of that decision I have heard further submissions on 11th December 2012 (see below).
There was a further procedural wrangle between the parties at the PTR held on 22 nd June 2012 before Newey J. Discovery challenged parts of the second witness statement of Ms Cassandra Gilbert a solicitor with SNR Denton who represent AETN in these proceedings. Discovery argued it contained opinion evidence which AETN should not be permitted to adduce. That was rejected by Newey J who gave permission to rely upon the entirety of the statement. At the same hearing Discovery conceded that certain paragraphs of the second statement of their witness Ms Susanna Dinnage should be deleted since they amounted to expert evidence for which no permission had been given.
These matters led to further disputes at the trial which I shall deal with below when I come to analyse the nature of the evidence as it ultimately appeared in the trial and the effects of that evidence.
Discovery also conceded that AETN could rely on witness statements from witnesses obtained through the pilot questionnaire and on a CEA notice which attached documents identifying individuals contacted through the questionnaire exercise from whom no witness statement could be obtained. This could hardly be challenged given provisions of the CEA 1995. However once again there was much debate over the worth of these statements. Since the PTR AETN served a further CEA notice in relation to two witnesses who had given statements but who did not attend the trial. Ultimately this led to a number...
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