High Court finds that "History" can be repeated
A highly anticipated High Court decision was handed down 1 February 2013 dismissing claims for trade mark infringement and passing off brought by A & E Television Networks LLC and its UK subsidiary AETN against Discovery Communications Europe Ltd.
The dispute was in relation to the television channel name "Discovery HISTORY", a related logo and the abbreviation "DISC. HISTORY" (which was displayed on an electronic programme guide). In the view of Mr Justice Peter Smith, AETN failed to demonstrate that the use of the word “history” was not merely descriptive of a channel providing programmes on history, and therefore there was no infringement of the registered marks.
The first claimant, A & E Television Networks LLC is an American broadcasting company. Its UK subsidiary A & E Television Networks (UK) Ltd, in conjunction with BSkyB History Ltd, operates the second claimant AETN UK (both claimants are referred to as AETN).
In 1995, AETN launched The History Channel in the UK. In 2002 AETN registered THE HISTORY CHANNEL as a UK word mark, followed by a CTM in 2006, both for for cable and television broadcasting services. In July 2008, AETN launched the Military History channel and rebranded The History Channel to History shortly afterwards. AETN also registered a corresponding CTM comprised of the word HISTORY and an "H" logo.
The defendant, Discovery Communications, also broadcast cable and satellite channels in the UK. In 2010, it announced plans to rename one of its channels "Discovery History".
In its claim against Discovery, AETN sought to restrict the use of the specific words “history” and “military history” or any confusingly similar name or names by Discovery, under passing off. It also claimed that the 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 trade marks. Discovery counterclaimed for invalidity of AETN’s trade marks.
Trade Mark Infringement
Peter Smith J considered AETN's claim to be "bold” in its attempts to restrict the use of the words “history” and “military history”.
Indeed, the claim was too bold because s 11(2)(b) of the Trade Marks Act and Article 12(b) of the Community Trade Mark Regulation (207/2009/EC) state that a registered trade mark 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 trade mark infringement.
Turning to the issue of passing off, the Judge referred to the case of Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd 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”.
Peter Smith J noted that AETN’s History Channel had previously co-existed with a BBC cable TV channel called UK History (2002-2004), which was rebranded to UKTV History (2004-2009). Whilst 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 did not pursue the matter.
Whilst UKTV History was no longer a relevant competitor since 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 trade marks, it would have litigated.
The previous existence of another TV channel also meant that AETN’s claim of goodwill inherent in the word "history" was not valid. Smith J accepted that AETN had established goodwill in the expression "The History Channel" and there was no evidence that the goodwill had disappeared following the channel's rebranding in 2008. However, the existence of such goodwill was not considered relevant due to the highly descriptive nature of the word “history”.
In Peter Smith J's opinion, the 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, Peter Smith J concluded that AETN failed to establish any trade mark infringement or passing off by Discovery. However, he also did not accept Discovery's counterclaim that AETN’s trade marks were invalid, commenting “I have simply decided that Discovery’s action have not infringed them. I therefore find that the Counterclaim similarly fails”.
The Judge was highly critical of AETN's witness gathering exercise in support of its passing off claim, noting Lewison LJ's observation in the recent Interflora Inc v Marks & Spencer plc case that: “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”.
In particular, Peter Smith J was concerned that none of the witnesses understood (as they were not informed) that their conversation was being noted and that AETN would serve that note 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.
Descriptive words such as "history" or "science" in channel names provide the viewer with a handy indication of programme content. As this case has demonstrated, whilst a commonly used term such as "history" can acquire goodwill and reputation as a trade mark, 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, Peter Smith J 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.
However, this judgment also reminds solicitors of the need to ensure that witness statements accurately reflect what the witness would otherwise have said orally. 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.
 A & E Television Networks LLC and AETN UK v Discovery Communications Europe Ltd  EWHC 109 (Ch) (1 February 2013).
  63 RPC 39
  EWCA Civ 1501