How appropriate it is that a case involving history should itself be a little historical by the time it finds its way on to this weblog. The case in question is A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch), a decision of Mr Justice Peter Smith in the Chancery Division, England and Wales, way back on 1 February. This Kat meant to write it up for the weblog there and then, especially since any decision of the controversial Da Vinci Code judge -- for good or otherwise -- is usually worth noting. But one distraction led to another ... Anyway, to avoid turning a short apology into a long excuse, here's the case.
A
& E Television Networks (AETN for short), a Delaware corporation and its British subsidiary, maintained that Discovery's use of the television channel name
DISCOVERY HISTORY and its abbreviation DISC. HISTORY amounted to trade mark
infringement of its own word mark THE HISTORY CHANNEL and device mark containing
the term HISTORY, both of which were registered as Community trade marks in Classes 9, 16, 38 and 41, the former also
registered as a UK trade mark in Classes 38 and 41 broadly relating to cable
and television broadcasting services. AETN also claimed passing off of HISTORY
and MILITARY HISTORY on the ground that the reputation of those channels was
such that DISCOVERY HISTORY caused deception among members of the public and
damaged its goodwill.
Discovery counterclaimed for invalidity of AETN's trade marks
and submitted that their mark did not infringe on the ground that the term
HISTORY was an indication concerning the characteristics of the goods or
services as provided for in section 11(2) of the Trade Mark Act 1994 and Article 12(b) of Council Regulation 207/2009 on the Community trade mark. The passing off claim was
defended on the grounds that HISTORY was descriptive and Discovery’s own
reputation was such that it had substantial goodwill.
The
dispute focused mainly on the admissibility and probative value of evidence
and, in particular, on the evidence of witnesses who had been identified by means of
questionnaires. AETN had been granted permission to conduct witness-gathering
evidence before the ruling in Marks
& Spencer Plc v Interflora Inc [2012] EWCA Civ 1501 [noted by the IPKat here], which requires the
court, at an interim stage, to conduct a critical analysis of whether such
evidence will be valuable to a determination of the issues and justifies the
costs involved.
In a plague-on-both-your-houses judgment, Mr Justice Peter Smith dismissed both AETN's
action and Discovery's counterclaim would be dismissed [you mean the eleven days the two parties spent in court might as well have been spent down at the Old Nick, says Merpel]. In the learned judge's opinion:
* AETN
had no right in respect of the word HISTORY, which was descriptive and identified
the characteristics and contents of what was, when all was said and done, a channel which provided programmes about history. As such, AETN was not
entitled to restrict its use.
* Neither was AETN afforded the protection of
passing off. The addition of the word DISCOVERY, in its full or abbreviated
form, identified that channel with Discovery, which itself had long-established
goodwill.
* There was no indication that AETN had suffered any damage to its
viewing figures or income. What's more, the credibility of AETN's claim was found
to be materially weakened by its failure to sue another business on highly
analogous facts several years earlier, indicating that AETN did not believe it had goodwill in the word and had brought the claim merely to stifle
competition [Says Merpel, does this show the cumulative value in later proceedings of having brought even no-hope infringement actions in earlier times?]
* Since AETN had failed to show that the word HISTORY was not descriptive, an analysis
of the probative value of witness evidence obtained by surveys of the public
according to the principles laid down in Marks
& Spencer was unnecessary. However, the issue was given consideration
on the basis that the evidence could not be disregarded retrospectively and at
such a late stage of the litigation. The
relevance of survey evidence, the purpose of which is it provide real evidence
from ordinary members of the public wholly untainted by any artificiality (per Neutrogena [1996] RPC 473 at 497), was
found to depend on whether it assists the judge's own
assessment of the perception of the notional person. It will not however be of
assistance if it is inadequate and of little probative value. Inadequacies
identified in Marks & Spencer,
such as evidence which cannot be challenged due to an absence of waiver of
privilege, were found to be equally applicable to both the likelihood of
confusion by the reasonably well informed, observant and circumspect consumer
in trade mark infringement and the likelihood of deception of the substantial
proportion of the relevant public in passing off.
* In
this case, the survey and witness-gathering evidence was of no probative
value and demonstrated all the inadequacies identified in Marks & Spencer. It failed to establish that there was any
likelihood of confusion by, or deception of, the hypothetical viewer. The
witnesses had been selected on the basis that they were the most favourable to
the parties' case and not for representative purposes [Well, says Merpel, there wouldn't be much point in selecting them if they weren't ...]. There was no clear
pattern as to how the channels were found and a significant number of the
witnesses would probably not be regular viewers. AETN had asserted privilege in
respect of the preparations of live witness statements and objected to any
cross examination on that subject. It was revealed during cross-examination
that some draft witness statements had been unfairly obtained, finessed by the
solicitors so as to be more favourable to the parties and unapproved by the
witnesses. Employee evidence established goodwill in both AETN's HISTORY
CHANNEL and Discovery's DISCOVERY CHANNEL -- but was essentially unsatisfactory opinion
evidence.
* It
was not accepted that AETN's marks were invalid, but only that Discovery had not
infringed them.
This Kat recalls being a little surprised when this case emerged from the ether, since it had never occurred to him that there might be any possibility of infringement or passing off -- though he appreciates that others see things differently. He notes the judge's finding that both parties had ample goodwill in their own names; it's a shame that AETN's perception of its own goodwill led to so much ill-will against Discovery as to lead to litigation.
More on Mr Justice Peter Smith here
A history of cats here
The IPKat gratefully thanks recent guest Kat Kate Manning for her invaluable contribution to this post.