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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch) (01 February 2013) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2013/109.html Cite as: [2013] EWHC 109 (Ch) |
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CHANCERY DIVISION
Rolls Building, Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
A & E Television Networks LLC(2) AETN UK |
Claimants |
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| - and - |
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Discovery Communications Europe Ltd |
Defendant |
____________________
Mr John Baldwin QC & Miss Charlotte May (instructed by Burges Salmon LLP) for the Defendant
Hearing dates: 11, 12, 13, 16, 17, 18, 19, 20 & 23 July and 11 December 2012
____________________
Crown Copyright ©
Peter Smith J:
INTRODUCTION
television
channel name
DISCOVERY
HISTORY which the Claimants contend amounts to trade mark infringement and passing off by virtue of their rights in connection with the
television
channel name HISTORY (formerly known as THE HISTORY CHANNEL) which was used on an increasing scale allegedly in the UK for 15 years before the launch of
DISCOVERY
HISTORY in October 2010. There is also a Counterclaim for invalidity of the trade marks.
Television
Networks
(UK) Ltd who, together with BSKYB History Ltd operates the Second Claimant AETN UK which is a private limited company and is the Second Claimant. In this judgment the Claimants are referred to collectively as "AETN" hereafter save where necessary to distinguish them.
Discovery")
also broadcasts cable and satellite
television
channels in the UK. On 7th November 2010 it changed the name of one of its subsidiary channels from
DISCOVERY
KNOWLEDGE to
DISCOVERY
HISTORY having announced an intent to do so on 1st October 2010.
DISCOVERY
or THE
DISCOVERY
CHANNEL is the most watched of the pay TV factual channels. Thus
DISCOVERY
and HISTORY are the top two documentary channels and each of the businesses regards the other as its principal competitor.
AETN'S CASE
DISCOVERY
HISTORY has caused and will continue to cause deception amongst members of the public who will believe that this channel is connected with HISTORY. The Claimants assert that the reputation of HISTORY is such that the addition of the name
DISCOVERY
is not sufficient to dispel deception.
DISCOVERY
with a defence.
BACKGROUND
Discovery's
plan to rename its channel which was widely publicised in the industry press. As a result AETN immediately between 10th -13th October 2010 conducted a pilot "questionnaire exercise" (so described in AETN's opening paragraph 9) to ascertain whether the proposed new name would be likely to cause deception amongst members of the public. The results of this questionnaire exercise were asserted to be positive. Accordingly having received a negative response to a letter before action AETN issued the present proceedings on 5th November 2010.
i) UK Trade Mark No. 2,308,512 for the word mark THE HISTORY CHANNEL registered as of 21 August 2002 in class 38 in respect of cable and
television
broadcasting services; and in class 41 in respect of education and entertainment services, all for radio or
television;
production and distribution of radio and
television
programs and broadcasts; provision of information relating to
television
and radio programs, entertainment and education; publication of magazines, books, texts and printed matter;
ii) Community Trade Mark No. 5,378,732 for the word mark THE HISTORY CHANNEL registered as of 12 October 2006, inter alia, in class 9 in respect of sound and video tapes, cassettes, discs and records; in class 16 in respect of printed matter; periodical publications, books, program guides, program transcripts, photographs, posters, stationery, instructional and teaching materials (except apparatus); in class 38 in respect of cable
television,
radio and satellite broadcasting services; and in class 41 in respect of educational and entertainment services, including the production and/or distribution of
television
and cable
television
programs; computer on-line services, namely providing education and entertainment materials by means of the global computer
network;
iii) Community Trade Mark No. 7,150,766 for a mark comprising the word HISTORY and a device consisting of the letter H as follows:
.png)
television,
digital
television,
satellite, Internet and radio broadcasting services; transmission services, namely transmission to mobile devices, computer
networks,
video-on-demand, podcast and webcast services; online discussion boards; and in class 41 in respect of education and entertainment services, including cable and
television
programming; educational and entertainment services, including the production and/or editing and/or distribution and/or presentation of programs for
television,
cable
television,
digital
television,
satellite
television
and radio; entertainment and educational services in the nature of multimedia programming distributed via various platforms across multiple forms of transmission media in the field of history, historical settings, historical dramas and historical subjects and individuals and information regarding same provided via a global computer
network;
television
program syndication; providing newsletters in the field of history, historical settings, historical dramas and historical subjects and individuals via email; providing online games.
Discovery's
logo.
.png)
DISCOVERY
HISTORY for
Discovery's
television
channel and all the various different usages that entails including the logo and the abbreviation DISC. HISTORY which is used on the Sky EPG (electronic programme guide), to identify the channel.
Discovery
defends the Claim and in its Defence served 7th December 2010 included a Counterclaim to invalidate the trade marks. At a CMC on 8th April 2011 AETN sought permission from Mann J in accordance with the current procedure to conduct a further "full" questionnaire exercise. At this hearing
Discovery
made various criticisms of AETN's proposed exercise but these were rejected by the Judge who gave AETN permission to administer the questionnaire in the form proposed and to serve statements from the witnesses identified from the response of such questionnaires. Despite that there was much debate before me over the results obtained as a result of the questionnaire exercise carried out by AETN. Further following the conclusion of the case the Court of Appeal in Marks & Spencer Plc v Interflora Inc [2012] EWCA Civ 1501 delivered a comprehensive judgment on 20th November 2012 in respect of the use of such material in trials for passing off and/or infringement of trade marks. As a result of that decision I have heard further submissions on 11th December 2012 (see below).
Discovery
challenged parts of the second witness statement of Ms Cassandra Gilbert a solicitor with SNR Denton who represent AETN in these proceedings.
Discovery
argued it contained opinion evidence which AETN should not be permitted to adduce. That was rejected by Newey J who gave permission to rely upon the entirety of the statement. At the same hearing
Discovery
conceded that certain paragraphs of the second statement of their witness Ms Susanna Dinnage should be deleted since they amounted to expert evidence for which no permission had been given.
Discovery
also conceded that AETN could rely on witness statements from witnesses obtained through the pilot questionnaire and on a CEA notice which attached documents identifying individuals contacted through the questionnaire exercise from whom no witness statement could be obtained. This could hardly be challenged given provisions of the CEA 1995. However once again there was much debate over the worth of these statements. Since the PTR AETN served a further CEA notice in relation to two witnesses who had given statements but who did not attend the trial. Ultimately this led to a number of different forms of evidence given by witnesses on behalf of AETN. Some were the subject matter of unsigned statements served under the CEA 1995. Some were served and signed under the CEA 1995.
PASSING OFF
"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. I am ready to believe that in this case genuine mistakes were made. I think they ought not to have been made. In the Vacuum Cleaner case it appeared that ninety per cent of its customers had addressed the Plaintiffs, in the British Vacuum Cleaner Coy., Ltd as the "Vacuum Cleaner Coy". In spite of this fact and of instances of actual confusion Parker J refused to grant an injunction to restrain the New Vacuum Cleaner Coy., Ltd from using the word "vacuum cleaner" in conjunction as part of its registered or other name. So in Turton v Turton (42 Ch D 128) the possibility of blunders by the public was held not to disentitle the defendant form trading in his own name though the plaintiff had long traded in the same name. It comes in the end, I think, 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. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be renered.
I have not troubled your Lordships with many of the numerous cases on this topic. The principles of law are, as I have said, very clear and their application will depend on the facts of each case."
"In my opinion, the doctrine on which the judgment of the Court of Appeal was based, that where a manufacturer has used as his trade-mark a descriptive word he is never entitled to relief against a person who so uses it as to induce in purchasers the belief that they are getting the goods of the manufacturer who has theretofore employed it as his trade-mark, is not supported by authority, and cannot be defended on principled. I am unable to see why a man should be allowed in this way more than in any other to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival". (Per Lord Herschell) and:-
"Cases of this sort must depend upon their particular circumstances. The facts of one case are little or no guide to the determination of another." (Per Lord McNaughten)
"11 Limits on effect of registered trade mark.E+W+S+N.I.
(1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).
(2 )A registered trade mark is not infringed by—
(a) the use by a person of his own name or address,
(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, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial matters".
"Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or services or of rendering of the service, or other characteristics of the goods or services;
(a) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters".
Discovery
contends that the description of the channel is merely descriptive of the services it is providing namely a channel which provides programmes on history and is similarly indicative of the kind and characteristic of the goods or services provided namely a channel which shows programmes devoted to history for the purposes of Section 11 of the Act and the Regulation.
DISCOVERY
distances
Discovery's
channel from AETN's because
Discovery
identifies the channel with a group of channels from
Discovery
of which
Discovery
History is one. 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.
Discovery
from using the word History on its own or in association with
Discovery
which in my view further distances
Discovery's
channel from AETN. I will set out the reasons for this further in this judgment.
Discovery
History in respect of
Discovery's
Channel fails.
Discovery's
own logo. That instinct remained unchanged at the conclusion of the trial for reasons which I shall set out below. Nor did I believe and still do not believe that the
Discovery
logo is an actionable passing off. In this context the on screen "bugs" or "DOG" (digital on screen graphics) (as to which see more below) equally are not passing off or infringements of any of the trade marks. Finally I do not accept that the identification on the Sky EPG of DISC. HISTORY is either an infringement of AETN's trade marks or passing off because I do not believe that is any less descriptive of the programme content than the use of the channel's full name
DISCOVERY
HISTORY.
VIEWING SKY PROGRAMMES – AN OVERVIEW
i) The traditional route by hardcopytelevision
guides (a rare route nowadays).
ii) Scrolling within the Electronic Programme Guide ("EPG"). It is sorted into categories by genre. The category relevant to the channels in this dispute is the Documentary Category. The placement of a channel within the EPG is very important. The importance is viewer fatigue in that the higher up the category the more likely the channel is going to be accessed.
iii) Moving up and down channels.
iv) "Banner scrolling" while watching a channel. This is where whilst still watching one channel full size on screen, the viewer changes only the banner displayed at the bottom of the screen which displays the channel title, current programme and next programme for each channel. I should say (from my own personal experience) the High Definition channels ("HD") have a more sophisticated method of banner scrolling. In addition to the banner scrolling a summary of the relevant programme is identified in the corner as one scrolls through the various programmes.
v) Accessing a channel directly by number.
vi) Accessing a programme directly by name.
vii) Accessing a channel from a viewer's own favourites list stored on his set top box.
viii) A combination of methods.
ix) Video on demand service.
x) Websites.
Discovery
by the use of its display name of DISC. HISTORY on the EPG itself is significant. The name is also usually displayed as part of an on screen bug or DOG. This is a channel logo displayed in the corner of the screen often at the top. In addition there are Idents and Bumpers which short sequences are shown between programmes which usually show the channel name and/or logo.
COMPETING CHANNELS – AN OVERVIEW
DISCOVERY
HISTORY since October 2010 AETN's viewing figures have increased. That is surprising in view of AETN's claims about the effect of
Discovery's
activities. The viewing figures are of course extremely modest.
INCOME
network
by the platforms on which the pay TV channel is available. In the case of the HISTORY CHANNEL and MILITARY HISTORY these are Sky, Virgin Media and BT Vision in the UK. The HISTORY CHANNEL is also available through "Top Up TV" in the UK and UPC in Ireland. The subscription revenue paid by each platform varies from channel to channel and is the subject of varying negotiation. Each platform takes a number of performance factors into account when negotiating with the channel as to the subscription revenue to be received by it.
DISCOVERY.
television
ratings in the UK. This is called "Broadcaster's Audience Research Board" ("BARB"). BARB is funded by subscription fees paid by any organisation in the UK which wishes to receive and use its data including
television
channels and advertising agencies.
DISCOVERY
HISTORY not launched but relies on the survey witnesses showing viewers are confused. This is confirmation of what he said in paragraph 134. It is in the context of course of the fact that the viewing figures have increased and thus there is no threat as I see it to any loss of income by reason of
Discovery's
activities. This in my view is a difficult platform for the present claims.
THE
DISCOVERY
GROUP OF COMPANIES
Discovery
is a company registered in England and Wales but comes out of a long established stable being part of the global media and entertainment group
Discovery
Communications.
Discovery
broadcasts factual entertainment and lifestyle
television
channels via cable and satellite throughout the UK, the rest of Europe, the Middle East and Africa.
Discovery
is
Discovery
Communications Inc a Delaware Corporation which is publicly traded on the NASDAQ stock exchange which has its headquarters in Maryland USA.
Discovery's
immediate parent company is
Discovery
Communications LLC which is in turn wholly owned by
Discovery
Communications Inc.
Discovery
Communications was founded by John Hendricks in the USA in 1985 with the launch of a single factual
television
channel called "the
Discovery
Channel".
Discovery
Communications has grown to become one of the largest international
television
businesses. When the rebrand occurred
Discovery
Communications operated more than 120
television
channels in more than 40 languages across 180 countries and had in excess of 1,500,000,000 cumulative subscribers (that is the total number of subscribers to any
Discovery
Channel). As the curse of statistics show where two households each receive 5
Discovery
Channels from their
television
provider representing two subscribers the cumulative figure is 10.
Discovery
Communications' first market outside the USA was in the UK with the launch of the
Discovery
Channel in April 1989. It remains the single biggest market for
Discovery
Communications outside the USA.
Discovery's
turnover for the years 2007-2010 on average exceeded £100,000,000 per annum in the UK and Ireland.
Discovery
Channel. In addition there were a number of smaller channels such as
Discovery
Knowledge and
Discovery
Science. These were targeted at a male audience. In the latter part of 2009 when Ms Forbes joined
Discovery
as Executive Vice President ("EVP") and the Managing Director for
Discovery's
UK and Ireland business an analysis was conducted of a male audience ("ABC1 Men Research"). The purpose was to better understand the viewing behaviour of
Discovery's
male audience and how to increase viewer numbers (Forbes paragraph 27).
Discovery
Channel and
Discovery
Knowledge. This was causing viewers to switch indiscriminately between those channels and ultimately what Ms Forbes describes as the "cannibalisation" of the
Discovery
Channel's viewing figures. By that it meant that if viewers migrated to the lesser channel that had an adverse impact on the
Discovery
Channel's viewing figures which was its flagship channel. That channel essentially has the major role in determining the higher rate of advertising and subscriber revenue compared to the other channels.
Discovery
Knowledge as "
Discovery
History" which in his words (paragraph 42) would provide the brand clarity that [had been] recommended. His view was that there was no other word in the English language which creates as clear and immediate a message that a channel shows history related programmes as the word "history". At the time he did not realise that the name had been considered earlier although that became apparent as discussions about this rebrand progressed. On 9th March 2010 Ms Dinnage circulated a research report from 2004 that she had found. This report based on research material obtained in 2003 had identified
Discovery
History as the most appropriate name for the rebrand of the channel which was then called
Discovery
Civilisation and which also showed primarily historical content.
DISCOVERY
HISTORY was perceived as providing a different positioning for history programming from the other "History" branded channels on air at the time with the addition of
Discovery
adding an exciting and fresh angle to the history. The evidence on this was not clear. It appears to have been believed wrongly that Sky had refused a change to
Discovery
History in 2004, as the unchallenged evidence of Dan Korn and Frederico Gaggio Beretta showed. In 2007 when the change took place to
Discovery
Knowledge,
Discovery
History was considered and
Discovery
History was rejected. Ultimately the name that was put to Sky was
Discovery
Knowledge and that changed from
Discovery
Civilisation which took effect on 1st November 2007.
Discovery
in the light of the present activities.
PROPOSAL PUT TO SKY
Discovery
had with Sky. The other factor which has been raised is that Sky is a 50% shareholder in AETN and therefore has a commercial interest in AETN's channel. As Ms Forbes pointed out she was concerned that Sky would refuse the change of name because it might affect AETN's business in which it had a 50% shareholding. I refer again to Ms Forbes' evidence which sets out the initial contacts with a Robert Webster (Head of Third Party Channels) at Sky and Adrian Pilkington (Director of Partner Channels) on 18th March 2010 which led to a formal approval in a telephone conversation she had with Robert Webster on 12th May 2010. At no time was there any suggestion from the Sky representatives that the change to
DISCOVERY
HISTORY would cause any danger to AETN.
"The reason why I am giving this statement is that Sky is remaining neutral in these proceedings. The Claimants are therefore not producing any witness statements from anyone at Sky commenting on the accuracy of the suggestion [that Sky made an assessment there will me no risk of confusion caused by the rebrand]. Indeed, the Claimants' in house lawyers and solicitors have not had an opportunity to discuss the matter with the relevant people at Sky".
Discovery
Knowledge to
DISCOVERY
HISTORY was being made until the change was advertised just before the launch (i.e. October 2010).
Discovery
put to Mr Davidson part of an email chain from the XX file (folder 8B) where he had sent out an email 16th September 2010 informing people generally within AETN that
Discovery
Knowledge was going to be none other than
DISCOVERY
HISTORY. And he commented "yes the joys of competition".
OTHER NAMES
Discovery.
Both are grouped together and have that group identified by the first name i.e. UKTV or
Discovery.
They are separated from others on the EPG but they are all grouped together. It is true that the
Discovery
channels are higher up the EPG (and therefore as all parties accept are better placed to catch viewers than those lower down the EPG) but that is not the point.
DISCOVERY
HISTORY identical. In my view this silence for 7 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. Once again this is evidence which is not determinative but it is strongly probative and supports the evidence (which I shall analyse further in this judgment) that 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.
Discovery's
submissions in their closing submissions that in addition to that credibility factor the presence of UKTV HISTORY unchallenged for 7 years prevents AETN asserting it has any goodwill in the word HISTORY and shows that members of the relevant trade and public did not associate the word HISTORY with a particular TV channel. It is also strongly supportive of the view that the word HISTORY is merely describing the content of the programmes on the channel. The key word is actually
DISCOVERY
(just like UKTV). The channel is primarily associated with the
Discovery
stable which has its own separate and long established goodwill. The word HISTORY merely identifies the contents. All relevant
Discovery
Channels are grouped together (save the HD channels) on the EPG.
DISCOVERY
said in its closing AETN to succeed needs to show that matters changed post 2009 (when UK TV HISTORY was branded to YESTERDAY) so that the use of the word "HISTORY" on its own equalled "a TV channel connected in the course of trade with the Claimants and no other". The point was put to Mr Davidson AETN's MD in cross examination (T2/331):-
"16 Q: So as of November 2010, you accept, do you, that History as a brand had not really made itself any presence?
A: Well I think it is difficult to say any. I think you have chosen
Q: No significant presence.
A: We do not have any statistics here to really assess that."
DISCOVERY
in these proceedings. When pressed on this by Mr Baldwin QC for
Discovery
he said that he could not remember (T3/386). As I have said this all very unconvincing and demonstrates in my view that in 2002 AETN did not believe it had a serious cause of action against UKTV HISTORY arising out of the use of the word HISTORY.
Discovery
channels are grouped together including
DISCOVERY
HISTORY. They are higher up the EPG than HISTORY as the snapshots of the various EPG pages show. HISTORY and MILITARY are themselves higher up the EPG than YESTERDAY but nothing turns on that now although that was the position until 2009.
DISCOVERY
HISTORY (abbreviated to DISC. HISTORY) and assume when they see the word HISTORY that the channel is AETN's channel or a joint venture or a new channel of AETN's. I will analyse the evidence of the viewers further in this judgment but to my mind Mr Davidson's proposition is simply untenable. He was cross examined on this (T3/401-403). I do not see how it can be seriously argued that when a viewer scrolls the EPG and comes to a clutch of channels all of which are named with the first word being
DISCOVERY
or DISC that DISC HISTORY is something connected with AETN. It is plainly part of the
Discovery
suite and it is not suggested that the use of the word
DISCOVERY
does anything other than identify
Discovery's
channels which have been long established. This to my mind showed the desperate nature of the Claimants' evidence; Mr Davidson attempting to persist in maintaining the unmaintainable. Eventually he accepted that when he said he had no concrete evidence to support his proposition in paragraph 111 (T3/402).
CONSIDERATION OF WITNESSES
EMPLOYEE WITNESSES
Discovery
in paragraph 5 of its closing. I will not set out the large number of examples where they established that he and AETN generally used HISTORY as a descriptive use of the product content. Further evidence shows that Mr Davidson referred to matters which he said related to HISTORY when they clearly referred to the HISTORY CHANNEL.
Discovery
has established goodwill in the
Discovery
Channel and other channels which include the word
Discovery
in their description (see below).
Discovery
does not argue however that AETN no longer has goodwill in the expression the HISTORY CHANNEL by reason of the fact that it no longer uses that description. Five years' non use is required (section 46 TMA). Even if that is the case I do not see that the evidence establishes that the goodwill in the phrase the HISTORY CHANNEL no longer subsists. A similar argument arose in the Team Lotus case above (see paragraphs 253 therein and following).
DISCOVERY
HISTORY than the word history.
DEFENDANT'S REPUTATION
Discovery
Channel is a consumer super brand and it was not challenged by AETN that it was the most widely recognised and well known of all the pay TV channel brands. It is well known by the relevant trade and customers alike to operate a suite of channels which are all listed together on both the EPG and in press listings. Although one or two have slipped out where HD channels are created; they are not in the same suite. Whilst Mr Davidson attempted to challenge this reputation (see paragraph 115 of his first witness statement) he capitulated in cross examination (T3/417-420):-
"A: It feels that is a more extreme view of what I am saying. I am talking in general here, not every viewer, and particularly the occasional viewers we are trying to attract, who comes to this environment is not going to know whatDiscovery
is. Then, therefore, if you see in particular Disc History and you were one of the viewers who did not know what
Discovery
was but did know History, then there would be a chance for confusion.
Q: What likelihood is there, Mr Davidson, in the real world that somebody being familiar with the History Channel and not familiar with theDiscovery
Channel, the most famous of all non terrestrial channels, more famous than yours? It is pretty remote is it not?
A: I do not disagree with that, they are both very well known channels". [page 417]
Discovery.
HISTORY is in the same documentary group and on some EPGs is on the same page. The point was put to Mr Davidson (T3) that the material he relied upon for paragraph 115 to suggest that the name
Discovery
was not meaningful did not actually support him. He reluctantly accepted that and ultimately his evidence is a matter of opinion. I reject his opinion. Further I also reject his suggestion that there was confusion because DISC HISTORY and HISTORY were on the same page. Ultimately he acknowledged that that was in reality unsustainable (T3/442). Further if a viewer was using the EPG to find a particular programme the programmes are identified on the page. Once again Mr Davidson acknowledged (for example) that it was unlikely that a fan of individual shows would end up watching Time Team (a YESTERDAY programme usually but not always) when they were looking for Pawn Stars (a HISTORY programme) (T3/443).
Discovery's
channel as
DISCOVERY
HISTORY or DISC HISTORY does not confuse anyone.
VIEWER WITNESSES
Television
Networks
LLC v
Discovery
Communications Europe Ltd [2011] EWHC 1038 (Ch) paragraph 8 he said:-
"In the case before me, as will appear, it is necessary to bear in mind the juridical basis of what it is that the court is doing when exercising its control. In my view it is doing (at least) the following:
i) So far as a party is going to seek to put expert evidence before the court, the court is exercising its power to control the amount and nature of expert evidence in order to make sure the expert evidence is proper evidence, admissible, and proportionate.
ii) So far as a party seeks to put in the actual answers to questions, the court is ensuring the evidence is admissible and probative.
iii) So far as the court is controlling the calling of live witnesses obtained as a result of some form of survey evidence (so-called witness collection exercises) it is again ensuring that the evidence is admissible and probative. In particular, it is acting to prevent a party seeking to call a witness whose evidence is going to be tainted to an unacceptable degree by the mechanism under which it is collected (an inappropriate question).
iv) In so doing, the court is ensuring that costs are not wasted and are proportionate. It is wrong for costs to be wasted in conducting hopeless surveys, for the other party to have to waste costs dealing with that evidence, and for court time to be wasted in dealing with it at trial.
v) When a court is acting in this capacity it must bear in mind that it is acting at some remove from the trial. If it disallows a survey it is concluding, short of a trial, that evidence which one party wishes to adduce should not be allowed in because it will be of no or insufficient value. In embarking on that exercise it must acknowledge that there will be cases in which it is not wholly clear that the evidence in question will be valueless. In those circumstances the right course may be not to bar the evidence or survey at the interim stage, but to allow it and to have more informed argument at the trial (or conceivably at another interim stage, provided that that is a cost-effective way of going about the matter)."
television
viewer]." As Lewison LJ observed, in the absence of special circumstances how could calling 10, 20 or 30 witnesses selected from a statistically invalid survey be extrapolated into the effect on that legal construct of the advertisement or sign in issue (Marks & Spencer paragraph 73). I agree with and gratefully adopt that observation.
"7 The Court has heard from 8 members of the public as indicated in opening and acknowledged by the Court, the evidence from these witnesses is very important in this case. It is central to the key issue for trade mark infringement and passing off, in particular, reputation and misrepresentation."
"The upshot of this review is that courts have allowed the calling of evidence of the kind that Interflora wishes to call and have considered it, either in conjunction with or in the absence of a statistically valid and reliable survey. But it is generally of little or no value. Sometimes it does no more than confirm the conclusion that the judge would have reached without the evidence. In passing off cases it sometimes has greater effect, but as I have said more than once, passing off raises a different legal question. Unless the court can be confident that the evidence of the selected witnesses can stand proxy for the persons or construct through whose perception the legal question is to be answered it simply represents the evidence of those individuals. In a case in which the witnesses are called in order to amplify the results of a statistically reliable survey their evidence may be probative. But unless the court can extrapolate from their evidence, it is not probative."
"137 That is not to say that there can never be evidence called in a case of trade mark infringement. The court may need to be informed of shopping habits; of the market in which certain goods or services are supplied; the means by which goods or services are marketed and so on. In addition I must make it clear, however, that different considerations may come into play where:
i) Evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement;
ii) Evidence from consumers is called in order to amplify the results of a reliable survey;
iii) The goods or services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge's experience;
iv) The issue is whether a registered mark has acquired distinctiveness; or
v) Where the cause of action is in passing off, which requires a different legal question to be answered.
138 Outside these kinds of cases there may be others where a judge might think that it would be useful to hear from consumers. I would not wish to rule out the possibility. So I would not accept the proposition that evidence from respondents to a questionnaire can never be called in the absence of a statistically valid and reliable survey. But (apart from those I have mentioned) the cases in which that kind of evidence might be of real use are difficult to imagine. I would not therefore hold that such evidence is inadmissible as a matter of law.
139 However, it does not follow that if evidence is technically admissible, the court in civil proceedings must admit it. CPR 32.1 provides:
"(1) The court may control the evidence by giving directions as to –
(a) the issues on which it requires evidence;
(b) the nature of the evidence which it requires to decide those issues; and
(c) the way in which the evidence is to be placed before the court.
(2) The court may use its power under this rule to exclude evidence that would otherwise be admissible."
140 CPR Part 1.4 provides:
"(1) The court must further the overriding objective by actively managing cases."
141 This is a positive duty placed on the court. CPR Part 1.4 (2) goes on to say that active management of cases includes:
"(h) considering whether the likely benefits of taking a particular step justify the cost of taking it."
"The current practice, which Arnold J understandably followed, is to allow the evidence in unless the judge can be satisfied that it will be valueless. In my judgment that is the wrong way round. I consider that, even if the evidence is technically admissible, the judge should not let it in unless (a) satisfied that it would be valuable and (b) that the likely utility of the evidence justifies the costs involved.
It follows, in my judgment, that the approach that I took in UK Channel Management Limited v E! EntertainmentTelevision
Inc (and followed by Mann J in A & E
Television
![]()
Networks
LLC v
Discovery
Communications Europe Ltd §8 (v)) should no longer be followed".
"In the present case I do not consider that Interflora has demonstrated that the evidence it wishes to call would be of real value. To put it bluntly, Interflora starts with an unreliable dataset from which it proposes to select the witnesses most favourable to itself. I would hold, therefore that Mr Hobbs' macro objection is well founded. I would therefore allow the appeal on that basis.
There was some debate before us about the procedure that should be followed. First, it is clear that the court cannot make any order without some material on which to base its decision. Thus there can be no objection to the carrying out of a true pilot survey, at the risk as to costs of the party carrying it out, before applying for permission to adduce the results of a survey. But that pilot survey will be no more than a basis for a further survey. Second, an application to admit survey evidence or evidence from respondents to a survey (or pilot survey) should be made as early as possible in the course of case management. It would not be right to leave it to the time when witness statements are exchanged. The objective of such an application is to have a definitive ruling one way or the other. It is a natural temptation for a judge who is not immersed in the case to leave questions of admissibility to trial. It is the temptation to which I succumbed in UK Channel Management Limited v E! EntertainmentTelevision
Inc. But balancing the cost of a survey (or witness collection exercise) against its likely utility, this temptation should be resisted. Third, the form of order that has evolved provides that:
"…neither party has permission to adduce survey evidence without first having obtained the leave of the Court. Any application for such leave is to include details of any questions proposed to be used in any such survey and details of the method and procedures proposed to be adopted in relation to the conduct thereof."
It is, in my judgment, doubtful whether this form of order catches a witness collection exercise. After all, Interflora does not wish to rely on the survey evidence of questionnaires. It wants to rely only on the evidence of the selected witnesses. In Specsavers International Healthcare Ltd v Asda Ltd [2010] EWHC 1497 (Pat); [2010] FSR 28 Mann J held that although a witness collection exercise might not fall within the literal effect of the order, it nevertheless fell within the vices which such an order was designed to eliminate. His decision in this respect was upheld by this court: [2012] EWCA Civ 24; [2012] ETMR 17. Whether this was right as a matter of interpretation of the order does not matter. What matters is that the purpose of the order is, as Kitchin LJ put it in Specsavers:
"to avoid the spending of time and money on what is clearly irrelevant and unsatisfactory evidence."
For the future, the standard form of order should be redrafted so as to make it clear that:
A party may conduct a true pilot survey without permission, but at his own risk as to costs;
No further survey may be conducted or adduced in evidence without the court's permission; and
No party may adduce evidence from respondents to any survey without the court's permission.
In deciding whether to give permission, the court must evaluate the results of whatever material is placed before it. Only if the court is satisfied that the evidence is likely to be of real value should permission be given. The reliability of the survey is likely to play an important part in that evaluation. Even then the court must be satisfied that the value justifies the cost. As Mr Hobbs said, this requires the court to conduct a cost/benefit analysis. In a case of trade mark infringement in which the issue is one of deception in relation to the provision of ordinary consumer goods or services, these criteria are likely to be satisfied only in a special or unusual case.
If what is sought is permission to carry out a survey, the applicant should provide the court with:
The results of any pilot survey;
Evidence that any further survey will comply with the Whitford guidelines; and
The cost of carrying out the pilot survey and the estimated cost of carrying out the further survey.
If what is sought is permission to call witnesses who have responded to a survey or other experiment, the applicant should:
Provide the court with witness statements from the witnesses proposed to be called;
Demonstrate that their evidence will be of real value in deciding the issues the court has to decide;
Identify the survey or other experiment and, in the case of the administration of a questionnaire disclose how many surveys have been carried out, exactly how those surveys were conducted and the totality of the number of persons involved and their answers to all questions posed;
Disclose how the proposed witnesses were selected from among the respondents to the survey; and
Provide the court with the cost of carrying out the pilot survey and the estimated cost of carrying out any further work in relation to those witnesses."
"It may have a material effect on the court's decision whether (and if so to what extent) the applicant is prepared to waive privilege in so far as it attaches to the selection, interviewing and preparation of witness statements for the witnesses proposed to be called. In the absence of a waiver of privilege in this respect, a party who wishes to challenge the evidence is likely not to be able to do so effectively; and in particular would not know what questions were asked of the witness in order to prepare the witness statement. If the evidence proposed to be called cannot be effectively challenged, that may in itself reduce its potential probative value."
DETAILED CONSIDERATION OF VIEWER EVIDENCE
"Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to be useful have all involved some of the "Pollees" coming to court."
"The proper approach of the Court to the question was not in dispute. The Judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall "jury" assessment involving a combination of all these factors, see "GE" Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the Court, not for the witnesses. It follows that if the Judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the Judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more "it depends on the evidence".
DECEPTION
HOW THIS EVIDENCE WAS OBTAINED
Discovery
in its closing to criticise the method of the gestation of the draft witness statements in the case of the CEA evidence.
Discovery's
closing submissions) the final statements did not necessarily reflect what was being said. Such a statement would then be served and despite protests against being willing to give evidence they could have become unwilling witnesses if
Discovery
had required them to attend court. I suppose there is nothing technically wrong with this but it seems blatantly unfair to witnesses. Further the procedure would not come out unless privilege was waived. This demonstrates the strength of Lewison LJ's observation in the Marks & Spencer case that the gestation of any witness statements should be revealed (i.e. privilege waived).
Discovery
in its closing provided detailed criticisms of the Civil Evidence Act evidence both in relation to the statements that were actually signed and served and those that were unsigned. That criticism in my view is justified and accords with my view of the evidence. There are so many questions over the evidence that I can attach no weight to them. Further one must not lose sight of the fact that this evidence is secondary; it is untested. That of itself is enough to require the Court to give little weight to it. At best it can be supportive of live evidence. It will not improve AETN's case if its live evidence has failures (which in my view it has).
THE LIVE EVIDENCE
Discovery
History. This reflected my own view. As I have said above I did not notice (along with the vast majority of the viewing public apparently) the change of name from The History Channel to History. Most people I would have thought scroll down the EPG and look at the relevant programme and the synopsis of that programme. All the documentary channels are grouped together and in my view viewers will programme spot. I accept that some will have favourites and they will access them by favourites. Some might remember a channel but nothing clear emerged in respect of that.
Discovery
History was in some way associated with HISTORY. In this context I refer to and accept the detailed analysis of the live evidence in
Discovery's
Closing and the conclusions in paragraph 37 which accords entirely with my view of the evidence of the live witnesses. Nothing clearly came out of their evidence at all as that analysis shows.
Discovery
by the use of the word History in the title of
Discovery's
channel Disc or
Discovery
History.
CONCLUSION
Discovery's
channel Disc History/
Discovery
History as so described. I accordingly dismiss AETN's action.
COUNTERCLAIM
Discovery's action have not infringed them. I therefore find that the Counterclaim similarly fails.