Legal Update - Trade Mark Infringement

Intellectual Property – Trade Mark – Trade Mark Infringement – Passing Off – A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] – Regulation 207/2009

In the recent case of A&E Television Networks LLC v Discovery Communications Europe Ltd [2013], the High Court dismissed claims for trade mark infringement and passing off regarding the use of the name “Discovery History” in respect of a television channel.

Background

A&E Television Networks LLC is a US broadcasting company with a UK subsidiary called, A&E Television Networks (UK) Limited (“AETN”);
In 1995, AETN launched The History Channel in the UK;
In 2002, AETN registered THE HISTORY CHANNEL as a UK word mark;
In 2006, AETN registered THE HISTORY CHANNEL as a Community trade mark, in respect of cable and television broadcasting services;
In 2008, AETN rebranded The History Channel as History and launched a channel called “Military History”. AETN also registered a Community trade mark comprising the word HISTORY and a logo of the letter ‘H’;
Discovery Communications Europe Ltd (“DC”) broadcasts cable and satellite channels in the UK;
In 2010, DC wanted to rename one of its channels to Discovery History.

Claim

AETN brought an action against DC for trade mark infringement in respect of the specific words ‘history’ and ‘military history’ and for passing off claiming the names were confusingly similar.
AETN also claimed that the use of the name “Discovery History”, including the logo, amounted to infringement of AETN’s registered trade marks.
DC counterclaimed for invalidity of AETN’s trade marks.

Decision

AETN’s claim was dismissed.

AETN failed to establish infringement of any of its trade marks or passing off by DC in relation to the use of the word “history” in the title of its channel.

Trade mark infringement

It was held that:

The use of the word “history” did not infringe the registered trade marks because it was a descriptive term that identified the content shown on the television channel.
Section 11(2)(b) of the Trade Marks Act 1994 and Article 12(b) of Regulation 207/2009 state that a registered trade mark is not infringed “by the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of the goods or service”.

Passing off

It was held that:

There was strong evidence that AETN did not believe that the use of the word “history” in association with another word which merely described the programmes on a channel was something capable of protection. This was evidenced by the fact that for a total of seven years the channel “UK History”, which was subsequently rebranded as “UKTV History” had co-existed with AETN’s History Channel. The Judge referred to the case of Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd [1946].
AETN could not assert that it had the goodwill in the word “history” when other businesses used the same word.
The survey evidence that was adduced was seen as statistically insignificant and of no probative value when analysed. The inadequacies of survey evidence were identified in the Interflora case. The Judge made clear that he would not have allowed such evidence to be introduced, had the interflora case been available to him at the trial. In particular, the Judge stated that “evidence like this should not be permitted to be adduced unless the person seeking to adduce it before the trial establishes that it has some probative value.”

DC’s counterclaim was dismissed.

Comment

In this case the Judge was critical of the method of obtaining the survey evidence. In particular, where AETN’s solicitors cold called witnesses and took notes on what was said during the conversation, without first revealing that the questions were for litigation. The Judge in this case also agreed with the observation made in the interflora case that the gestation of any witness statements should be revealed, i.e. privilege waived. Further “this case demonstrates the need for solicitors preparing witness statements to curb their enthusiasm in seeking to obtain the best for their clients."

“It must not be forgotten that witness statements are merely a replacement for evidence which a witness previously used to give live in chief. It is intended to be the factual evidence of the witness in his own words. Too often witness statements are drafted by solicitors who put words in their mouth to achieve a better result. Witness statements can then be changed from drafts to a later stage without the witness understanding the significance of the change. An extreme example of this kind of activity was highlighted by me in a statement I made in the Farepak case. In this case too it is clear that statements were “finessed” to present them in a more favourable light from AETN's point of view without the witnesses understanding what was happening. This is unfair to witnesses. They should not be required to justify witness statements when the true effect of them is not understood by them.”

If you require any legal advice on trade mark law or other IP law issues, you may contact us by email [email protected]. Visit http://www.rtcoopers.com/practice_intellectualproperty.php or at http://www.rtcoopersiplaw.com .

© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.