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

Factual and Procedural Background

This case concerns claims by the Plaintiff against the Defendant for trade mark infringement and passing off relating to the use of the television channel name "DISCOVERY HISTORY". The Plaintiff asserts rights over the name "HISTORY" (formerly "THE HISTORY CHANNEL"), used in the UK for approximately 15 years before the Defendant launched "DISCOVERY HISTORY" in October 2010. The Plaintiff is a Delaware company with a UK subsidiary and a private limited company operating the channels "HISTORY" and "MILITARY HISTORY". The Defendant broadcasts various television channels in the UK, including "DISCOVERY" and rebranded one of its channels from "DISCOVERY KNOWLEDGE" to "DISCOVERY HISTORY" in November 2010.

The Plaintiff contends that the Defendant’s use of "DISCOVERY HISTORY" causes deception among the public, suggesting a connection with the Plaintiff's "HISTORY" channel. The Defendant denies infringement and counterclaims for invalidity of the Plaintiff’s trade marks. Procedurally, the case involved permission to conduct questionnaire exercises, disputes over witness statements, and consideration of the evidential value of survey and witness evidence, including guidance from the Court of Appeal in Marks & Spencer Plc v Interflora Inc [2012] EWCA Civ 1501. The trial included live witness testimony, documentary evidence, and detailed submissions from both parties.

Legal Issues Presented

1. Whether the Defendant’s use of the name "DISCOVERY HISTORY" infringes the Plaintiff’s registered trade marks, including the word mark "THE HISTORY CHANNEL" and a mark comprising the word "HISTORY" and a device.
2. Whether the Defendant’s use of "DISCOVERY HISTORY" amounts to passing off by causing deception or confusion among the relevant public.
3. The validity of the Plaintiff’s registered trade marks as challenged by the Defendant’s counterclaim.
4. The admissibility and probative value of survey evidence and witness statements obtained through witness collection exercises in trade mark infringement and passing off proceedings.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff claims extensive reputation and goodwill in the name "HISTORY" and related marks, used in the UK for over 15 years.
• The Plaintiff argues that the Defendant’s use of "DISCOVERY HISTORY" causes deception, as the addition of "DISCOVERY" is insufficient to prevent confusion.
• The Plaintiff contends that the word "HISTORY" in the Defendant’s mark is not merely descriptive but is associated with the Plaintiff’s channels.
• Survey evidence and witness statements show a likelihood of confusion among viewers regarding the connection between the channels.
• The Plaintiff relies on trade mark infringement and passing off principles to prevent the Defendant’s use of the contested name.

Defendant's Arguments

• The Defendant asserts that "HISTORY" is a descriptive term identifying the nature of the channel’s content and thus cannot be monopolized by the Plaintiff.
• The Defendant emphasizes the presence of the distinctive "DISCOVERY" element, which identifies the channel as part of its established suite of channels, distancing it from the Plaintiff’s marks.
• The Defendant challenges the probative value of the Plaintiff’s survey and witness evidence, highlighting procedural and methodological flaws.
• The Defendant contends that no confusion arises because the channels are clearly differentiated by their branding and placement in electronic programme guides (EPG).
• The Defendant denies infringement of the Plaintiff’s trade marks and passing off, and asserts the validity of the trade marks challenged in the counterclaim.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39	Limits on protection of descriptive words in trade names; risk of confusion inevitable but courts avoid unfair monopolization.	The court recognized the boldness of the Plaintiff’s claim to exclusive rights over the word "HISTORY" and relied on this precedent to emphasize that descriptive terms cannot be monopolized unfairly.
Reddaway v Camel Hair Belting [1896] AC 199	Trade mark protection against deceptive use of descriptive words depends on particular circumstances.	The court noted that cases depend on facts, and the Plaintiff’s claim must be assessed in light of whether the Defendant’s use induces deception.
Marks & Spencer Plc v Interflora Inc [2012] EWCA Civ 1501	Guidance on admissibility and probative value of survey and witness evidence in trade mark infringement and passing off cases.	The court applied the principles to critically evaluate the Plaintiff’s questionnaire and witness evidence, ultimately finding it insufficiently probative.
Imperial Group Plc v Philip Morris Ltd [1984] RPC 2903	Whitford guidelines on the reception of survey evidence in trade mark cases.	Used to assess the reliability and methodological soundness of the Plaintiff’s survey evidence, which was found wanting.
A&E Television Networks LLC v Discovery Communications Europe Ltd [2011] EWHC 1038 (Ch)	Control and management of expert and survey evidence to ensure admissibility and proportionality.	The court referenced this precedent to justify stringent control over the Plaintiff’s evidence gathering methods and the weight to be accorded to such evidence.
Specsavers International Healthcare Ltd v Asda Ltd [2010] EWHC 1497 (Pat); [2010] FSR 28	Restrictions on witness collection exercises and the necessity of court permission for survey evidence.	Applied to the Plaintiff’s witness collection exercise, highlighting the need for transparency and probative value before admitting such evidence.
Group Lotus Plc & Anr v 1 Malaysia Racing Team and FDM BHD & Ors [2011] EWHC 1366 (Ch)	Exceptional cases where goodwill can be shared.	The court distinguished the present case, concluding it was not one where goodwill in the word "HISTORY" could be shared.
Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341 (Jif lemon case)	Overwhelming evidence of deception can be decisive in passing off claims.	The court noted the absence of such convincing evidence in the present case.

Court's Reasoning and Analysis

The court began by acknowledging the Plaintiff’s established goodwill and trade mark rights in the term "THE HISTORY CHANNEL" but emphasized the descriptive nature of the word "HISTORY" itself. Citing the House of Lords’ precedent, the court recognized that descriptive terms used by multiple traders inevitably carry some risk of confusion, but this risk does not justify monopolization.

The court found that the Defendant’s use of "DISCOVERY HISTORY" clearly identifies the channel as part of the Defendant’s suite of channels, with "DISCOVERY" serving as a distinctive element that distances it from the Plaintiff’s marks. The use of "HISTORY" was held to be descriptive of the channel’s content and thus not infringing under Section 11(2)(b) of the Trade Marks Act 1994 and Article 12(b) of the Community Trade Mark Regulation.

Consideration was given to the Plaintiff’s survey and witness evidence. The court applied the guidance from Marks & Spencer Plc v Interflora Inc, finding that the Plaintiff’s evidence was methodologically flawed, selectively presented, and of limited probative value. The court highlighted concerns about the fairness and transparency in the preparation and use of witness statements, especially those obtained through witness collection exercises and Civil Evidence Act notices.

Live witness testimony failed to demonstrate confusion among viewers, and the court found no credible evidence that the average, reasonably observant and circumspect television viewer would be misled into believing that "DISCOVERY HISTORY" was connected with the Plaintiff’s "HISTORY" channel. The court also noted that the Plaintiff’s viewing figures had increased despite the Defendant’s rebranding, undermining claims of loss or damage.

Further, the court considered the commercial context, including the role of Sky as a platform and stakeholder, and the historical coexistence of other channels using the word "HISTORY" without dispute, notably UKTV HISTORY, which coexisted for seven years without litigation. This supported the conclusion that the Plaintiff cannot monopolize the word "HISTORY".

Ultimately, the court concluded that neither trade mark infringement nor passing off was established. The Defendant’s use of "DISCOVERY HISTORY" was lawful and did not infringe the Plaintiff’s rights. The counterclaim for invalidity of the trade marks was also dismissed, as the court found the trade marks valid but not infringed.

Holding and Implications

The court’s final decision is DISMISSED in favor of the Defendant, holding that:

• The Defendant’s use of "DISCOVERY HISTORY" does not infringe the Plaintiff’s registered trade marks.
• The Defendant’s use does not amount to passing off or cause deception among the relevant public.
• The Plaintiff’s trade marks challenged in the counterclaim remain valid.

The direct effect of this decision is that the Defendant may continue using the "DISCOVERY HISTORY" channel name without legal impediment from the Plaintiff. No new precedent was established beyond the application and reaffirmation of existing principles regarding descriptive terms, trade mark infringement, passing off, and evidential standards in survey and witness evidence. The decision underscores the importance of distinguishing descriptive elements from distinctive trade marks and highlights rigorous scrutiny of evidence purporting to demonstrate confusion or deception.