A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd

Descriptive words used in a television channel name cannot ordinarily be monopolised by one trader. Whether such use causes confusion remains a question of fact. The addition of a distinctive group or house name may sufficiently distinguish the channel, particularly where the descriptive word identifies programme content. For trade mark purposes, use of such an indication may fall within section 11(2)(b) of the Trade Marks Act 1994 and the corresponding limitation in Article 12(b) of the applicable Community trade mark Regulation, provided the use is in accordance with honest practices. Evidence from selected questionnaire respondents or witness-gathering exercises will generally have little or no probative value unless it can reliably assist the court’s assessment of the legally relevant consumer or public.

The claimants operated television channels branded HISTORY, THE HISTORY CHANNEL and MILITARY HISTORY and owned UK and Community trade marks including THE HISTORY CHANNEL and HISTORY. The defendant renamed one of its channels DISCOVERY KNOWLEDGE as DISCOVERY HISTORY.

The claimants alleged trade mark infringement and passing off, principally on the basis that viewers would associate DISCOVERY HISTORY, including the abbreviation DISC. HISTORY, with their channels. The defendant denied infringement and counterclaimed for invalidity of the trade marks. The issues included the descriptive character of HISTORY, the likelihood of confusion, the probative value of questionnaire and witness-gathering evidence, and the validity of the registered marks.

1. The claim was dismissed and the counterclaim for invalidity failed. The registered marks were valid, but the defendant’s use of DISCOVERY HISTORY, DISC. HISTORY, its logo and related on-screen presentations did not infringe them and did not amount to passing off.
2. The use of HISTORY was descriptive of a channel providing history-related programmes. The word DISCOVERY identified the defendant’s established group of channels and further separated the defendant’s channel from the claimants’ channels. The descriptive character of the word and the likelihood of confusion were fact-sensitive matters. The principles in Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 and Reddaway v Camel Hair Belting [1896] AC 199 were applied.
3. Use of HISTORY in the relevant context identified the characteristics of the services and therefore fell within section 11(2)(b) of the Trade Marks Act 1994 and Article 12(b) of Council Regulation (EC) No 207/2009, subject to honest practices.
4. The court adopted the guidance in Marks & Spencer Plc v Interflora Inc [2012] EWCA Civ 1501. Questionnaire evidence and evidence from respondents selected through a statistically invalid survey should not ordinarily be admitted unless it is likely to be of real value and its utility justifies the cost. The evidence in this case was statistically insignificant, inadequately gathered and incapable of establishing confusion among the relevant notional consumer or a substantial proportion of the relevant public.
5. The coexistence of UK HISTORY and UKTV HISTORY for seven years, the established Discovery branding and the grouping of the channels on the electronic programme guide supported the conclusion that HISTORY was descriptive and that viewers would not be confused. These matters were supportive rather than determinative.
6. The exceptional possibility of shared goodwill recognised in Group Lotus Plc v 1 Malaysia Racing Team and FDM BHD [2011] EWHC 1366 (Ch) did not apply on the facts. The claimants had goodwill in THE HISTORY CHANNEL, but that did not confer a right to restrain descriptive use of HISTORY.