History and Discovery: of goodwill and ill-will

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.