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anybody can make history

6 March 2013

A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 109 Ch);

A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 276 Pat)

Background

The claimants AETN run the television channel History which was previously known as The History Channel. The defendant runs the Discovery Channel in the UK together with various other channels. When in 2010 the defendant renamed its Discovery Knowledge channel to Discovery History the claimants objected and ultimately sued for trade mark infringement and passing off. The claimants asserted three marks; a UK word mark for THE HISTORY CHANNEL in classes 38 and 41 a CTM for THE HISTORY CHANNEL in classes 9 16 38 and 41 and a CTM for a device including the word HISTORY beneath a large H again in classes 9 16 38 and 41.

The case was heard by Peter Smith J whose interests according to Whos Who include reading military history and it is clear from the judgment that he came to the case with some knowledge of the services subject of the litigation.

No infringement as History is descriptive

The case in trade mark infringement and in passing off were both decided on basis that the word history is descriptive and in any event there was no likelihood of confusion. The key elements of the law relevant to the decision are set out in the decision in Office Cleaning Services in relation to passing off:

where a trader adopts words in common use for his trade name some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words

and section 11 2) of the Trade Mark Act 1994:

A registered trade mark is not infringed by-…

b) 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 goods or services…

provided the use is in accordance with honest practices in industrial or commercial matters

From the start the judges view was that

at first blush it is difficult to see that the word HISTORY on its own is doing anything other than identify the nature of the operation that is to say delivery of history related programmes... I have struggled to find any more appropriate word to describe the contents of a channel which is specifically created to show programmes of a historical nature.

Nothing dissuaded the judge from this initial view. As discussed further below he did not find that the evidence showed any likelihood of confusion. He found support for this primary conclusion in the claimants lack of action against the BBC some years previously when it broadcast the channels UK HISTORY and UKTV HISTORY. Whilst on the facts this may have demonstrated that the claimants knew they had no case it would be worrying if on a more general level a rightsholders failure to pursue every single infringement was taken to be a sign that it did not believe in its brand. It also became apparent at trial that the member of the UK claimants board representing BSkyB a 50 shareholder in the UK claimant) did not consider that the claimants case had merit. The judge said that this was rather embarrassing but whilst it had some relevance it was only ever supportive of other primary evidence.

With nothing to dissuade him from his original view the judge found that

the use of the word HISTORY does not infringe the registered marks... as the word HISTORY in my view in the context of the channel identifies the characteristics of the goods namely a channel which provides history programmes.

It is interesting to contrast the judges approach to an 112) defence with that of Arnold J who delivers a very different style of judgment and often focuses on whether or not use is in accordance with honest practices. In Samuel Smith Arnold J set out ten factors he believed were relevant when assessing whether use is in accordance with honest practices and he has applied these in subsequent decisions including Starbucks v BSkyB. Starbucks like this case involved a device incorporating a common word - in Starbucks the word was Now. Arnold J held this device mark was invalid and had been valid it would only have had needlepoint or eggshell distinctive character so there was no likelihood of confusion. However if there had been prima facie infringement Arnold J said that the defendants could not use an 112) defence because their use was not in accordance with honest practices: Sky knew of the CTM before launching their service; the use was trade mark use and in contrast not descriptive) and Skys use interfered with the claimants ability to exploit their mark.

In this case in contrast Peter Smith J did not consider whether the marks only had limited distinctive character and only mentioned the words honest practices when quoting from statute. Instead he simply took the view that the claimants had not met their obligation to show that the use of the word history was not merely descriptive. But whilst the routes taken are clearly quite different one is left with the impression both judges would have arrived at the same outcome.

Criticism of Evidence

The judge was very critical of the claimants evidence. The witness evidence was heard in July 2012 before the Court of Appeals judgment in Marks & Spencer v Interflora which considered the probative value of evidence that came from questionnaires. The judge allowed the parties back to make submissions following that decision. As the evidence had been given he considered it but he was clear that:

had the Marks & Spencer case been available to me at the trial I would have not allowed any of the evidence to be introduced because it is plainly of no probative value when analysed.

The claimants had conducted a questionnaire; having analysed the results some participants were contacted and ultimately the claimants produced witnesses for cross examination witness statements unsigned and signed) from witnesses not made available for cross examination and completed questionnaires and attendance notes from four other respondents.

The judge was unimpressed: witnesses should not have statements taken if they are unaware they could be used in evidence; witnesses should be allowed to object to their evidence being entered; and too often witness statements are drafted by solicitors who put words in their mouth to achieve a better result. This was particularly the case with the evidence untested under cross examination of which the judge said that there are so many questions over the evidence that I can attach no weight to them.

He elucidated on this further in his costs judgment:

The purpose of my criticism is to put down a marker for all of the legal profession to take on board that witness statements are supposed to be live evidence of witnesses. Drafting long witness statements with craggy submissions and masses of documents and then in effect throwing those witnesses to the wolves without preparing them is one of the many failings of the use of witness statements… hopefully these kind of exercises will in the future be confined to the bin marked Irrelevant and not to used under any circumstances.

The only evidence the judge really considered was the evidence given live at court; and this did not show that viewers were confused into believing Discovery History was in some way associated with History.

Indemnity Costs

Early on in the proceedings the defendant made a drop hands offer; this was rejected and the parties combined spent £3000000 taking the matter to trial. In light of the drop hands offer and the weakness of the case it was hopeless to expect any court would stop the use of the word History) the judge awarded the defendant costs on an indemnity basis from the point that the drop hands offer expired.

Conclusion

This decision shows how much the Court of Appeals judgment in Marks & Spencer v Interflora has changed how judges approach evidence and claimants in trade mark cases will need to find new ways to show a likelihood of confusion between trade marks. The problems of large evidence gathering exercises will be compounded by the new cost rules. The case is also a reminder that descriptive marks only grant a limited monopoly.

This article was first published in the ITMA Review

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