No Monopoly in History: The History Channel v Discovery History

AETN broadcasts two cable and satellite channels in the UK: HISTORY (known as the HISTORY CHANNEL from 1995 to 2008) and MILITARY HISTORY. AETN is the registered proprietor of the word mark THE HISTORY CHANNEL.

Discovery also broadcasts cable and satellite television channels in the UK. Its primary channel, DISCOVERY or THE DISCOVERY CHANNEL, is the most watched of the UK pay TV factual channels. In November 2010 it changed the name of its subsidiary channel DISCOVERY KNOWLEDGE to DISCOVERY HISTORY.

DISCOVERY and HISTORY are the two top documentary channels in the UK and each business regards the other as its principal competitor.

AETN claimed that the use of the name DISCOVERY HISTORY and all the various different usages that entails including the abbreviation DISC. HISTORY on the Sky EPG (electronic programme guide) caused deception amongst members of the public who would believe that this channel was connected with HISTORY. AETN maintained that the reputation of HISTORY was such that the addition of the name DISCOVERY was not sufficient to dispel deception and Discovery had therefore infringed AETN’s registered UK and Community trade marks.

With some judicial understatement Mr Justice Peter Smith described as “bold” AETN’s claim to restrict under passing off the use of the specific word HISTORY. He referred to the following observation in a House of Lords decision:

“So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be. It comes in the end, to no more than this, that 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. The Court will accept comparatively small differences as sufficient to avert confusion.”

The judge also pointed out that, in respect of both the UK and Community trade marks:

“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 goods or services … provided the use is in accordance with honest practices in industrial or commercial matters.”

Discovery argued that the name of its channel was merely descriptive of the services it was providing, namely a channel which provided programmes on history, and was indicative of the kind and characteristic of the goods or services provided, namely a channel which shows programmes devoted to history.

The addition of the word DISCOVERY distanced Discovery’s channel from AETN’s because it identified the channel with a group of channels from Discovery of which Discovery History was one. The judge said that he had “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.” He could not see any basis, whether in relation to the trade marks or passing off, on which AETN could stop Discovery from using the word “History” on its own or in association with Discovery. AETN’s claim to stop the use of the words Discovery History in respect of Discovery’s Channel therefore failed.

The judge noted in passing that despite the presence of DISCOVERY HISTORY since October 2010 AETN’s viewing figures have increased, albeit that the viewing figures are of course extremely modest.

He also noted that, for a period of seven years commencing in 2002, AETN’s channel (under its then name the HISTORY CHANNEL and then HISTORY) co-existed with a BBC channel called UK HISTORY (2002-2004) and then UKTV HISTORY (2004-2009). When UK HISTORY was announced in 2002, AETN complained about the use of the word “History”. AETN asserted in a letter to the BBC that there was a potential source of confusion and an unfair effort to trade on the goodwill that AETN had developed in “the HISTORY CHANNEL” in the UK. AETN requested that the BBC choose a different title for its new history based channel. The BBC declined, saying that the channel would develop its place in the market without infringing either AETN’s trade marks or in any way trading on the goodwill of the HISTORY CHANNEL. There was no alternative channel brand that would fit the UK family of channels and clearly describe the content. The BBC rejected the suggestion that the use of the word “History” was going to cause confusion among viewers because viewers were used to multiple channels of a similar genre. Viewers looked at the branding of the channels to decide the channel owner and identity and the distinctly different branding and marketing and UKTV’s positioning of the channel within the UK family of channels would make UK HISTORY clearly distinct from the HISTORY CHANNEL.

AETN’s response to the BBC’s history channel was described by the judge as “somewhat limp”. Other than this AETN did nothing. “This silence for seven years is 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. Further it shows that as regards the use of the word “HISTORY” AETN cannot be in a position to assert it has the goodwill in that word when other businesses use the same word. If there was a serious belief as to confusion and damage to the goodwill and trade marks AETN would have litigated … the reality is that there is no basis for AETN’s claim and it has been brought merely for trade protection purposes to stifle competition.”

In the course of his judgment, the judge also referred to the guidelines set out in Marks & Spencer v Interflora relating to the carrying out of surveys for use in support of passing off claims, which he described as “witness gathering exercises”. He went on to adopt Lord Justice Lewison’s observation 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 statistically invalid and unreliable survey.”

This is not the first time that AETN has used litigation to try to exclude a competing channel from using a descriptive name. In 2006 Swan Turton successfully defended Channel 4 against a passing off claim by AETN in respect of a television programme whose name included the word “intervention” and concerned a psychotherapeutic technique known as … intervention.

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