Clive Thorne Georgia Davis April 8 2013 High Court finds that 'history' can be repeated RPC | Intellectual Property - United Kingdom Clive Thorne, Georgia Davis Intellectual Property FactsDecisionCommentA recent High Court decision dismissed claims for trademark infringement and passing off brought by A&E Television Networks LLC and its UK subsidiary AETN against Discovery Communications Europe Ltd in respect of television channel name 'Discovery History', a related logo and the abbreviation 'Disc History' (which was displayed on an electronic programme guide). In Justice Peter Smith's view, AETN failed to demonstrate that Discovery's use of the word 'history' was not merely descriptive of a channel providing history programmes; consequently, he found there to be no infringement of the registered marks.(1)FactsA&E Television Networks LLC is a US broadcasting company. Its UK subsidiary A&E Television Networks (UK) Ltd, in conjunction with BSkyB History Ltd, operates AETN UK.In 1995 AETN launched The History Channel in the United Kingdom. In 2002 AETN registered THE HISTORY CHANNEL as a UK word mark, followed by a Community trademark in 2006, both for cable and television broadcasting services. In July 2008 AETN launched a new channel called Military History and rebranded The History Channel as History shortly afterwards. AETN also registered a corresponding Community trademark comprised of the word HISTORY and an 'H' logo.Discovery Communications also broadcasts cable and satellite channels in the United Kingdom. In 2010 it announced plans to rename one of its channels 'Discovery History'.In its claim against Discovery, AETN sought to restrict Discovery from using the specific words 'history' and 'military history' or any confusingly similar name or names under passing off. It also claimed that use of the name 'Discovery History' and associated usages (including its logo and use on an electronic programme guide) amounted to infringement of AETN's registered trademarks. Discovery counterclaimed for invalidity of AETN's trademarks.DecisionTrademark infringementSmith considered AETN's claim to be "bold" in its attempts to restrict use of the words 'history' and 'military history'. Section 11(2)(b) of the Trademarks Act and Article 12(b) of the Community Trademark Regulation (207/2009/EC) state that a registered trademark 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".In the judge's opinion, there was no word more appropriate than 'history' to describe the content of a channel broadcasting historical programmes and, as such, there was no trademark infringement.Passing offTurning to the issue of passing off, the judge referred to the case of Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd,(2) in which Lord Simonds said that some risk of confusion was inevitable, but that risk "must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion".Smith noted that AETN's History Channel had previously co-existed with a BBC cable television channel called UK History (2002 to 2004), which was rebranded to UKTV History (2004 to 2009). While AETN had complained to the BBC about the channel at the outset, its concerns had been rebuffed, with the BBC noting that "there was no alternative channel brand that would fit the UK family of channels and clearly describe the content". AETN had not pursued the matter.While UKTV History was no longer a relevant competitor (it changed its name to Yesterday), the fact that AETN had remained silent for seven years was, in the judge's view, "a strong piece of supporting evidence that AETN does not seriously believe another channel which merely uses the word 'history' in association with another word which is merely descriptive of the programmes on it is something that is capable of protection". Had AETN had a serious belief regarding confusion and damage to its goodwill and trademarks, it would have litigated.The previous existence of another television channel also meant that AETN's claim of goodwill inherent in the word 'history' was invalid. Smith accepted that AETN had established goodwill in the expression 'The History Channel' and there was no evidence to suggest that the goodwill had disappeared following the channel's rebranding in 2008. However, the existence of such goodwill was considered irrelevant due to the highly descriptive nature of the word 'history'.In Smith's opinion, use of the word 'history' in association with 'Discovery' distanced Discovery's channel from AETN's and there was no issue of passing off. Accordingly, Smith concluded that AETN had failed to establish any trademark infringement or passing off by Discovery. However, he did not accept Discovery's counterclaim that AETN's trademarks were invalid, commenting that "I have simply decided that Discovery's action have not infringed them. I therefore find that the Counterclaim similarly fails".Survey evidenceThe judge was highly critical of AETN's witness gathering exercise in support of its passing-off claim, noting Lewison's observation in Interflora Inc v Marks & Spencer plc: "A cynic might think that the phrase 'witness collection programme' is simply a euphemism for adducing evidence from a skewed selection of witnesses identified by means of a statically invalid and unreliable survey".(3)In particular, Smith was concerned that none of the witnesses understood (as they were not informed) that their conversation was being noted and that AETN would serve those notes as hearsay evidence. In addition, some of the statements had been changed to present witnesses' comments in a more favourable light towards AETN, without the witnesses understanding what had happened.CommentDescriptive words such as 'history' or 'science' in channel names provide viewers with a handy indication of programme content. As this case has demonstrated, while a commonly used word such as 'history' can acquire goodwill and reputation as a trademark, it can be difficult to prevent competitors from using such a word for their own goods and services. The risk of confusion with the output of another broadcaster may prove legally impossible to prevent.In highlighting the inadequacies of the survey evidence, Smith reflected the new guidelines (set down in Interflora), which provide that survey evidence will not be permitted unless it is demonstrated to have some probative value and is likely to justify the costs involved.This judgment also serves as a reminder to solicitors of the need to ensure that witness statements accurately reflect what the witness would otherwise have said. Indeed, as far as is possible, they should be a record of the witness's own words and should not be viewed as an opportunity for solicitors to put words into a witness's mouth in order to achieve a better result.For further information on this topic please contact Clive Thorne or Georgia Warren at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email ([email protected] or [email protected]).Endnotes(1) A&E Television Networks LLC v Discovery Communications Europe Ltd  EWHC 109 (Ch) (February 1 2013).(2)  63 RPC 39.(3)  EWCA Civ 1501.