This case involves a trade mark and passing off dispute between rival television documentary channels and highlights the difficulty of enforcing what may potentially be viewed as descriptive words. Of particular note are the Court’s comments on the probative value of witness evidence gathered from questionnaires.
The claimants, A&E Television Networks, a Delaware corporation and its British subsidiary (AETN), operate cable and satellite television channels under the name HISTORY (previously THE HISTORY CHANNEL) and MILITARY HISTORY. AETN is the registered proprietor of the word mark THE HISTORY CHANNEL and the word and device mark (figure 1-below), registered as Community trade marks in Classes 9, 16, 38 and 41, with THE HISTORY CHANNEL also registered as a UK trade mark in Classes 38 and 41. The Defendant, Discovery Communications Europe Ltd (Discovery), operates the most watched documentary channel, DISCOVERY (or THE DISCOVERY CHANNEL). Discovery’s decision in 2010 to change the name of its channel DISCOVERY KNOWLEDGE to DISCOVERY HISTORY provoked AETN to issue proceedings, claiming:
- there was passing off in respect of HISTORY, THE HISTORY CHANNEL and MILITARY HISTORY; and
- Discovery’s channel, its logo (figure 2-below) and its abbreviation DISC HISTORY, featured on the Sky EPG (electronic programme guide), infringed its trade marks. Discovery counterclaimed for invalidity of AETN’s trade marks.
In the decision of Justice Peter Smith in the Chancery Division on 1 February, the Court held that use of DISCOVERY HISTORY would not cause deception or a likelihood of confusion amongst members of the public, and that AETN’s claims for infringement and passing off therefore failed by virtue of the provision in Section 11 Trade Marks Act and Article 12 of the Regulation. The Court deemed HISTORY as indicative of the kind and characteristic of the goods or services provided, namely programmes on history, and reasoned that the addition of HISTORY to DISCOVERY merely identified the channel with Discovery, who itself had substantial goodwill. Particular account was also taken of the fact that AETN’s viewing figures had increased despite the presence of DISCOVERY HISTORY, and that THE HISTORY CHANNEL (later, HISTORY) had co-existed with the BBC Channel UKTV HISTORY (later, UK HISTORY) for a period of seven years. The Court also remarked on the impact of Marks & Spencer v Interflora, which was inapplicable on the facts, but would have excluded witness evidence deemed by the Court as having no probative value. The court however refused the defendant’s counterclaim.
Under the Marks & Spencer guidelines, the Court must be satisfied that the benefits of conducting a questionnaire outweigh its costs and that the evidence is reliable. Prior to the Marks & Spencer case, AETN had been granted permission to conduct witnessgathering evidence to ascertain whether members of the public would be likely to be deceived by Discovery’s new name. In light of Marks & Spencer and Neutrogena, Peter Smith J considered evidence to be of probative value when it assists the judge’s view.
Since AETN had failed to establish a likelihood of confusion or deception, an analysis of the probative value of the questionnaire evidence was unnecessary under the Marks & Spencer guidelines. However, AETN’s evidence was considered on the basis that the litigation was too far advanced to retrospectively disregard it.
The Court considered that this case “demonstrates all the problems of survey and witness gathering evidence covered by the Court of Appeal in the Marks & Spencer case” and found that inadequacies identified in Marks & Spencer, particularly the observation that privileges should be waived for witness statements in respect of trade mark infringement, as equally applicable to the test for establishing passing off.
Peter Smith J particularly criticised the way in which the secondary evidence had been obtained from the public. From 1,004 full questionnaire forms, 167 respondents were contacted, 116 were spoken to and 14 witness statements were obtained.
Several witnesses were unaware their statement was being used as evidence until notified at the end of the questioning, and some of those who afterwards objected to use of their evidence had their comments used as hearsay evidence. Moreover upon cross-examination, the final statements did not always reflect what had been said on the phone.
Given the inability of the Court to always be able to explore questionnaire evidence with live witnesses, this case highlights the importance placed on the duty of solicitors to not manufacture witness statements and hearsay statements to achieve the best result for their client. Further, if a person is unaware their statement is to be used in evidence, or objects to the use of their statement as evidence, it is inappropriate for his/her statement to be served as evidence in Court.
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