B e f o r e :
THE HONOURABLE MR JUSTICE PETER SMITH
|| A & E Television Networks LLC
(2) AETN UK
||- and -
||Discovery Communications Europe Ltd
Mr James Mellor QC & Ms Lindsay Lane (instructed by SNR Denton UK LLP) for the Claimants
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
HTML VERSION OF JUDGMENT
Crown Copyright ©
Peter Smith J:
- This case concerns the use of a 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.
- The First Claimant is a Delaware company. It has a UK subsidiary A & E 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.
- AETN broadcast (inter alia) two cable and satellite channels in the UK now known as HISTORY and MILITARY HISTORY. AETN contends that they have an extensive reputation and goodwill in the UK. HISTORY (which was known as the HISTORY CHANNEL from November 1995 to November 2008) is apparently the second most watched channel of all the pay TV factual channels. The First Claimant is the registered proprietor of a number of trade marks including the word mark THE HISTORY CHANNEL.
- The Defendant ("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.
- The Defendant's primary channel 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 is that the name 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.
- Thus the Claimants are in effect contending a right in respect of the word HISTORY. They say that the word HISTORY whilst it has a descriptive meaning does not provide DISCOVERY with a defence.
- The dispute arose with the announcement on 7th October 2010 of 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.
- The claims are twofold. First there are claims in passing off in respect of the use of the names HISTORY, THE HISTORY CHANNEL and MILITARY HISTORY.
- Second AETN claims that the following trade marks are infringed:-
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:
- That mark was registered as of 11th August 2008, inter alia, in class 9 in respect of audio and video recordings on tape, disc, records, DVDs, CDs, cassettes or other recording media; digital downloads; in class 16 in respect of books, magazines, newsletters, educational materials, printed matter; in class 38 in respect of communication services; cable, 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.
- For comparison I include a sample of Discovery's logo.
- AETN's complaint relates primarily to the use of the name 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  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).
- There was a further procedural wrangle between the parties at the PTR held on 22nd June 2012 before Newey J. 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.
- These matters led to further disputes at the trial which I shall deal with below when I come to analyse the nature of the evidence as it ultimately appeared in the trial and the effects of that evidence.
- 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.
- A total of 8 witnesses gave oral testimony; Ms Tamara Smith, Mr Philips, Mrs Mills Brown, Mr Graves, Mr Lawson, Mr Maslin, Mr Brewer and Mr Campbell.
- I had 16 signed witness statements. In addition I had evidence from witnesses who were involved with AETN for AETN.
- This evidence requires careful analysis especially in the light of authorities which address the manner in which this evidence was gestated and the weight (if any) to be given to such evidence at trial.
- There are significant overlaps between this area and the trade marks but it is to be noted that AETN claim to restrict under passing off (inter alia) the use of the specific word HISTORY and the specific words MILITARY HISTORY or any name or names confusingly similar thereto. This in my view was and is a bold claim.
- It is bold because of the observation of the House of Lords in Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 where for example Lord Simonds said (page 43):-
"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."
- As Lord Simonds pointed out every case depends on its facts. Thus AETN remind me of what the House of Lords said in an earlier decision Reddaway v Camel Hair Belting  AC 199 at 210-211:-
"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)
- This is also relevant in respect of the Trade Mark Act 1994 ("the Act") and Article 12 (b) of Council Regulation (EC) number 207/2009 ("the Regulation").
- Section 11 (2) of the Act provides:-
"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".
- The provisions of the Regulation provides as follows:-
"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".
- In the case of passing off 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.
- 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. The addition of the word 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.
- As the above cases made clear this is essentially a question of fact. At the end of the evidence my provisional view at the start remained the same namely that I could not see any basis whether in relation to the trade marks or passing off that AETN could stop 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.
- Equally it seems to me that the use of the word "HISTORY" does not infringe the registered marks because of the provision of section 11 (2)(b) of the Act and Article (12)(b) of the Regulations 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.
- That of course is not the end of the case because of the other claims brought by AETN. However it means that AETN's claim to stop the use of the words Discovery History in respect of Discovery's Channel fails.
- Equally my instinct was that the trade mark in respect of AETN's word History and device (the third trade mark listed above) was not infringed by 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.
- As I have said notwithstanding those conclusions there is still much to be said in respect of the litigation.
VIEWING SKY PROGRAMMES – AN OVERVIEW
- Competing programmes are viewed primarily on Sky but also on programmes provided by Virgin. For the purpose of this judgment I will concentrate on the Sky channels. Nothing significant turns on this and there is no difference in result.
- The key to the evidence depends on how potential viewers of a particular channel find and select that channel. There are a number of ways of identifying and accessing a channel:-
i) The traditional route by hardcopy television 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.
- AETN contend that 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
- The HISTORY CHANNEL was launched in the UK in November 1995 as History Channel. MILITARY HISTORY was launched in July 2008. Shortly after the launch of MILITARY HISTORY the HISTORY CHANNEL was rebranded to HISTORY. The two channels are currently available to 10,000,000 subscribers in the UK through various pay TV platforms although the viewing figures are somewhat modest compared with that number.
- When the HISTORY CHANNEL was first launched it used what are traditional documentary style programmes. It tended to follow historical events using footage from the time. The programming focused particularly on military history (and more particularly World War II) and tended to be one off specials as opposed to a series. The channel broadcast such programmes for over 10 years and built up a loyal viewership (predominantly men of a "certain age").
- By 2008 the HISTORY CHANNEL decided to change its approach. AETN US was starting to broadcast a different type of history programming so called on the HISTORY CHANNEL in the US and it was proving very popular because it was appealing to a wider audience. As a result AETN UK started to take a similar approach. These programmes are series based and, it is said, look at historical topics in a more modern entertaining and faster paced way by using present day scenarios. One series "American Pickers" follows two men travelling around the US buying and collecting antiques and considering their history. "Pawn Stars" follows daily activities of pawn shops. Customers bring in a variety of artefacts to sell or pawn and the historical background of the artefact is discussed with experts appearing to appraise the items (a bit like the Antiques Roadshow in the United Kingdom but in a different context).
- This type of programming AETN contend brings HISTORY to life for viewers in a more entertaining and faster paced way that is more "accessible" (see Davidson paragraph 65) to today's viewer using current events and scenarios to look back at historical topics. AETN used the slogan "History made everyday".
- Over time the traditional level of military programmes reduced on the HISTORY CHANNEL. This is hardly surprising. Any aficionado of the traditional form of history on viewing the channel saw documentaries mostly based on World War II documentaries. There are a finite number of films of a contemporary time which are available to be viewed. Once that number is exhausted everything becomes repeats. As I have observed during the trial there is a limit to the number of times for example that a viewer wants to see the flag being raised by the US Marines on Iwo Jima or the meeting of the two Russian armies on the surrounding of the 6th Army in Stalingrad in November 1942. Viewer fatigue develops. Attempts to reverse that fatigue have been made by "colorising" the old black and white films and presenting them as new.
- No doubt there is a desire to keep these "traditional" programmes which are attractive to a particular group of viewers (apparently mostly male and aged 50 and above) on board. AETN created a separate military channel called MILITARY HISTORY. This was successful. In 2007 the HISTORY CHANNEL'S average audience was 12,900 and it grew to 15,300 in 2011. The average audience of MILITARY HISTORY has grown from 5,600 for the 12 months following its launch in July 2008 to 6,900 for the most recent 12 months (Davidson paragraph 67). It is to be noted in passing that despite the presence of 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.
- AETN believes its new style HISTORY has been beneficial. There is an overlap it is said so that around 62% of MILITARY HISTORY'S viewers will watch the HISTORY CHANNEL and around 30% of its viewers will watch MILITARY HISTORY. The average age of the HISTORY CHANNEL viewers is around 49 and MILITARY HISTORY around 57. Mr Davidson suggests that that has led to an attraction of younger viewers. Whether a difference between 49 and 57 justifies the epithet "younger" is perhaps a subjective viewpoint. As I have said however the audience is predominantly male.
- Shortly after the launch of MILITARY HISTORY in July 2008 AETN rebranded the HISTORY CHANNEL to HISTORY.
- This change of name missed the attention of viewers. It is quite clear on the evidence that many viewers still refer to HISTORY using the old name the HISTORY CHANNEL (myself included). AETN contends HISTORY better reflects their current offerings across a number of media platforms. In my view that is right because it describes the content of the programmes for offer on the channel (albeit looking at History in a different way).
- On extrapolating the viewing figures above AETN contends in 2011 HISTORY reached 3,800,000 adults a month and MILITARY HISTORY reached 2,200,000 per month. That was based on the number of people watching the channel on any one day for more than 3 minutes (a doubtful statistic in my view).
- It is important to understand how income is generated for the pay TV channels. There are two sources (1) subscription revenue and (2) advertising revenue.
- The former is paid to the 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.
- Advertising revenue in comparison is based on quantity of viewers within certain profiles and demographics. Sky Media acts as AETN's agent for the purpose of selling advertising on the channels and pays a proportion of the total advertising revenue it receives from those sales. The proportion it pays is negotiated with Sky Media and those negotiations are based predominantly on channel viewing figures and the age profiles and demographic profiles. AETN does not say that its revenue has fallen by reason of the actions of DISCOVERY.
- The viewing data is therefore important. An industry organisation exists which compiles audience measurement and 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.
- Its estimates are based on the viewing activities of a number of participating viewers (approximately 5,100 homes equating to about 11,500 individuals). This group are referred to as "the panel". Each participating viewer has a box in their home which tracks which channels and programmes are being watched when they are watched and the type of people who are viewing at any one time. BARB collects the panel data overnight and publishes it the following morning for its subscribers. The following week, final figures are released which are a combination of the overnight figures with time shift figures as well i.e. to address people who record a programme and watch it within a week. Based on those figures in very rough terms each participating house represents around 5,000 people out of the current UK population. That seems to me to be a primitive figure but nevertheless that is the way in which it operates. Each participating individual therefore has a significant impact on a channel's viewing figures and therefore the revenue (both subscription and advertising) payable to that channel. The identity of the panellists is necessarily confidential. Panels are rotated from time to time.
- As I have said above the documentary channels' viewing figures are comparatively low compared to other entertainment channels. According to BARB data the HISTORY CHANNEL gets around 200,000 viewers which equates to around 40 BARB panellists at any given time. Its average peak time (8pm to midnight) rating is around 50,000 which equates to only 10 BARB panellists. The average BARB ratings over a 24 hour period are around 15,000 to 20,000. That means that the number of BARB panellists watching these channels is as few as 3 or 4 at any one time.
- It follows from that as AETN accepts a few viewers can have a very large impact on viewer ratings.
- Apparently on 1st January 2010 BARB completely replaced its existing panel with an entirely new panel. After the change some channels increased their figures. For example the HISTORY CHANNEL'S viewing increased by 21% in January 2010 compared to December 2009 but Sky 2's viewing decreased by 17%.
- Separately from BARB Sky has its own system to calculate viewer related data called Skyview. This works on a principle of panellists. There are said to be somewhere in the region of 30,000 panellists. Sky use these panellists only for internal purposes and the data is confidential. AETN (for example) does not have access to it.
- The evidence adduced by AETN shows no clear identification of any drop in viewing figures and thus income see for example Davidson first paragraph 132 and Davidson second paragraph 41 where he acknowledges that the rebrand might not have currently affected the type of advertisers who advertise on the HISTORY CHANNEL and whilst he affirms the significant impact of the loss of one viewer the best Mr Davidson could say is in paragraph 134 of his first witness statement. In there he comments about MILITARY HISTORY having a troubled season in October-December 2011. He conceded in paragraph 135 that there was no real way of analysing what would have happened to their viewing figures had 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.
- The ultimate parent company of 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".
- Since 1985 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.
- The main channel was the 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).
- The result of the research indicated that viewers did not know what sort of programming was to be expected on the 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.
- Following that revelation the fairly traditional brainstorming meeting took place to evaluate what was the significance of those figures and how to address them.
- After this session a presentation was given by Simon Downing who at the time was the Vice President of UK Marketing (although he became Vice President of Marketing in Western Europe in October 2010). He gave evidence before me which was largely unchallenged.
- The concern about this cannibalisation process led him to address it by proposing to rebrand 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.
- That report suggested (inter alia) 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.
- Nothing turns on this in my view as it is important to test the claims made by AETN against Discovery in the light of the present activities.
PROPOSAL PUT TO SKY
- A change of name of the channel required the consent of Sky in accordance with the Distribution Agreement 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.
- There is a further feature which is surprising in the sense that the position was not entirely clear. Mr Webster who approved the rebrand on 12th May 2010 became a board member of the Second Claimant in June 2010. AETN's initial stance was that Sky would remain neutral in the proceedings and that AETN's in house lawyers had not had the opportunity to discuss the matter with the relevant people at Sky (Cohan second paragraph 4). That paragraph was extremely strong on Sky's neutrality Mr Cohan said:-
"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".
- I was surprised that it could be said without explanation that AETN's in house lawyers had not had an opportunity to discuss this with Sky. I was equally surprised that there had not been a discussion apparently between the two 50% shareholders nor even at AETN's board (including Mr Webster who was on the board before the proceedings were commenced).
- In opening AETN suggested that it did not know that the application to change Discovery Knowledge to DISCOVERY HISTORY was being made until the change was advertised just before the launch (i.e. October 2010).
- However that changed with the evidence. Mr Davidson AETN's managing director provided 3 witness statements. In none of them did he discuss Sky's position.
- However in supplementing his evidence about the structure of AETN (T1/103) he adverted to discussions with Sky. He stated he had discussions with Mr Webster stating that he spoke to him "off the record" (whatever that might mean) who gave him "his personal opinion" on this case. Mr Webster told Mr Davidson that he was upset that the case was going on because he did not believe that AETN's case had merit (apparently expressing an opinion that was described as personal). In cross examination (T3/382) Mr Baldwin QC for 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".
- Mr Davidson's evidence led to Mr Cohan producing a third witness statement for AETN. In that witness statement he gave evidence concerning telephone conversations he had with Mr Webster. He suggested this witness statement was supplemental to his second one where he said he had set out in his second witness statement the reason why he believes Sky might have given its approval. In fact his witness statement did no such thing. He referred to the informal conversations (i.e. more than one) with Mr Davidson and the views that he expressed. He actually asked Sky via Mr Webster to reconsider its position but he was told it would not. He said that he was not told the reasons for the approval which is to my view surprising. I would have thought Mr Cohan would have asked but he appears not to have done that. He confirmed that Mr Webster became a board member of the Second Claimant on 1st June 2010. Mr Cohan in cross examination (T6/914/20) said that "[AETN] have had the door slammed in [its] face quite frankly".
- The position therefore of Sky as presented by AETN was that its role was neutral despite its commercial interest in AETN but that stance moved to a situation where Mr Webster (as they knew) approved the change, came on the board of the Second Claimant and was then asked (wearing his Sky hat) to reconsider the position but he slammed the door in their faces. The reason for this is quite clear in my view; Mr Webster (albeit said to be privately) believed there was no confusion.
- The question is what is to be made of all this? Mr Webster did not give any evidence. He is a board member of the Claimant. There is no reason to suppose that the Claimant could not have secured his attendance. However it is plain that he would be unenthusiastic as regards AETN's case. This is all very interesting but in my view at best it can be supportive of other primary evidence as to confusion or not as the case may be. I have not seen Mr Webster give evidence nor seen him cross examined. Mr Webster has expressed an opinion privately or otherwise and as a result of his view Sky gave permission for the change of use. I do not see how any of that has any relevance because the decision as to whether or not there has been infringement is one for me as trial Judge and if Mr Webster had come to court and given an opinion there was no confusion that evidence in my view would have been inadmissible as an attempt to usurp the judicial function of the trial Judge. It is embarrassing for AETN and they were clearly somewhat reticent in the way in which they presented the Sky evidence but it is in my view nothing more than that.
- For a period of 7 years commencing in 2002 until March 2009 AETN's channel (then under its name of the HISTORY CHANNEL and then HISTORY) co-existed with a channel called UK HISTORY (2002-2004) and UKTV HISTORY (2004-2009) (a BBC channel).
- When UK HISTORY was announced in 2002 AETN complained. The complaint was about the use of the word HISTORY. AETN asserted in the letter dated August 2002 to the then Director General of the BBC Greg Dyke 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. The president and CEO of AETN then Mr Nicolas Davatzes (the author of the letter of complaint) made a personal and business appeal to Mr Dyke to choose a different title for the new history based channel.
- Mr Davatzes was firmly rebuffed by a letter from Mr Dyke dated 21st August 2002. In that letter he said that he was assured that UKTV were entirely confident that the new channel could develop its place in the market without infringing either AETN's trade marks or in anyway trading on the goodwill of the HISTORY CHANNEL. He also went on to remind Mr Davatzes that UKTV was a joint venture with BBC Worldwide and Flextech/Telewest. He set out that there was no alternative channel brand that would fit the UK family of channels and clearly describe the content (emphasis added). He then went on to say that the channel would be called UK HISTORY in line with UK TV's family of channels UK STYLE, UK GOLD, UK GOLD2, PLAY UK, UK DRAMA, UK HORIZON and UK FOOD. He emphasised that the channel consisted wholly of history related programming and that documentaries of a more general nature had a home on UK HORIZON. He rejected the suggestion that the use of the word "History" was going to cause confusion among viewers because he stated that these days viewers are used to multiple channels of a similar genre. Viewers look at the branding, he suggested, of the channels to decide the channel owner and identity and that he was confident that the distinctly different branding and marketing and UK TV's positioning of the channel within the UK family of channels will make UK HISTORY clearly distinct from the HISTORY CHANNEL. Equally he rejected any contention that UKTV HISTORY infringed any of AETN's trade marks. He concluded that he hoped that Mr Davatzes would agree "that there is clear blue water between our two channels".
- UKTV HISTORY is no longer a relevant competitor because it has changed its name to YESTERDAY (and now recycles old BBC programmes generally). Nevertheless the position of UK TV in my view is identical to that of 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.
- AETN's response to Mr Dyke's letter was somewhat limp. Mr Davatzes wrote back on 20th September 2002 referring to articles in newspapers which appeared to my mind to be nothing more than lines fed to journalists. Other than this weak response AETN did nothing.
- I find the factual matrix of the two scenarios i.e. UKTV HISTORY and 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.
- I accept 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.
- I accept there are exceptional cases when goodwill can be shared see Group Lotus Plc & Anr v 1 Malaysia Racing Team and FDM BHD & Ors  EWHC 1366 (Ch). The present case is not one where the goodwill can be shared and AETN do not assert otherwise. The failure to sue cannot amount to waiver or acquiescence in effect in rem although it might have been used by UK TV HISTORY if it faced a claim. As 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."
- Mr Davidson in his first witness statement (paragraph 102) produced the letters of complaint about confusion but failed (without any explanation) to produce Mr Dyke's telling response. In an attempt to explain the difficulties presented by the lack of action his evidence was that the tactic decided upon was one of public relations. Complaints were made to the BBC Fair Trading Compliance Committee about the BBC abusing its position and that was the thrust of the articles referred to above. This is all very unconvincing. He was unable to explain why there was no further investigation to discover why action was not taken against UKTV HISTORY of the type taken against 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.
- Some of the cross examination of Mr Davidson in respect of the location of the competing channels in the EPG was also relevant in my view. As I have said all of the relevant 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.
- In his evidence Mr Davidson asserted (and that is the right word in my view) (paragraph 111 of his first witness statement) that when viewers were scrolling the EPG they would see the name 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).
- One found a similar desperation on the part of Mr Davidson when he was cross examined on the use of the word "history". Over a number of pages (T2/304 et seq) Mr Baldwin QC put various other programmes which use the word history in the sense of "a way to describe times gone by". After these various examples were put to him ultimately this led him to suggest there were two uses of history namely "History" and "history". He described this as giving "the sense of a double entendre to the public who are using it" (T2/310 line 23). I am not sure what he meant by that and it was not clarified in his evidence but he was forced to concede that every time the word "history" is used even in the inside of their branding was used it needs to mean HISTORY i.e. AETN's channel (T2/311). This shows the hopelessness in my view of any attempt to stop the use of the word history on its own.
CONSIDERATION OF WITNESSES
- The witnesses fell into two categories as regards AETN. First there were the staff witnesses. Second there were the witnesses called as the members of the public. There was much debate about those witnesses as I shall set out below. Further this type of evidence was considered by the Court of Appeal after I reserved judgment in Marks & Spencer Plc v Interflora Inc  EWCA Civ 1501 after I reserved judgment. As a result of that decision which the parties provided to me whilst judgment was reserved I called for further written submissions and an oral hearing to consider the impact of that decision on the evidence in this case.
- Both sides called internal witnesses. I generally found the evidence of them unsatisfactory as they appeared to be put forward to argue cases rather than give evidence to assist the Court. Mr Davidson's arguments set out above are but an example. He was not alone. Nor was it confined to AETN. What I did discern from those witnesses was the essential background material in respect of each side's channels namely when they were created, how they developed and how they were in operation today.
- What did come out of AETN's evidence very strongly was the fact that despite the HISTORY CHANNEL being rebranded as HISTORY in 2009 it appears most people still hark back to the HISTORY CHANNEL. This reflects my own position: I never noticed the change either. Even Mr Davidson did this by error in his evidence as shown by 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.
- On the employee evidence I conclude that AETN has established a goodwill in the expression the HISTORY CHANNEL up until 2008 when it dropped that expression. I also conclude that 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).
- Nevertheless in my view that is not enough to stop the use of the word HISTORY on its own. That is descriptive of the contents of the channel. That is reinforced (if it actually needs reinforcing) by the interchanging use evidenced for example by Mr Davidson. I cannot conceive of any word that better describes the contents of DISCOVERY HISTORY than the word history.
- This is reinforced by the evidence of the members of the public insofar as it is possible to discern anything from that evidence.
- 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 what Discovery 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 the Discovery 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]
- When looking at the EPG, DISC HISTORY is in the suite of 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).
- This is reflective of the evidence of the viewers which were called and put to Mr Davidson (T3/443) where he acknowledged that there was no clear pattern of arrival at a programme. Some browsed by reference to the channel name others browsed by reference to their favourites and others browsed by reference to programme name and finally some browsed by reference to the summary of the programme. That latter is more difficult in a non HD channel because the "i" button needs to be pressed to put up the programme content whereas on the HD channel the content comes up automatically in a box whilst viewing of the programme currently being viewed continues. All of this as the analysis of the viewer evidence shows, in my view is that the naming of Discovery's channel as DISCOVERY HISTORY or DISC HISTORY does not confuse anyone.
- In an exchange on day 4 (T4/547-549) I raised with Mr Mellor QC the weight to be attached to the various types of evidence. I expressed the view that you can have any number of questionnaires and any number of witness statements, but they were not worth a jot compared with what witnesses say spontaneously in the box especially when witnesses have no partiality because they have no axe to grind in the case. I expressed the view that this was the only evidence that has any weight and that "if you cannot win a case on a witness like this, you are not going to win the case are you?"
- Mr Mellor QC responded "I absolutely agree with that My Lord". I then observed "Equally, from Mr Baldwin QC's point of view if he cannot challenge the evidence of the live witnesses successfully he might lose the case subject to all the peripheral stuff. That is not a view that is just a general principle about live evidence."
- Mr Mellor QC responded "It is a very fair way to approach these cases. The live witnesses matter."
- The evidence of the members of the public in this case demonstrates all the problems of survey and witness gathering evidence covered by the Court of Appeal in the Marks & Spencer case above.
- The Whitford guidelines (so-called after the decision of Whitford J in Imperial Group Plc v Philip Morris Ltd  RPC 2903 dealt a body blow to the reception of survey evidence. The 7 requirements (set out by Lewison LJ at paragraph 61 of his judgment in Marks & Spencer) were unattractive to litigants because it was a very demanding set of guidelines.
- That did not of course put people off; they merely moved to what are called "witness gathering exercises". This is what happened in this case. What happens is that there is a survey of the public. Those witnesses are then evaluated by the selector who decides who to call. As Lewison LJ pointed out (and as this case demonstrated) the selection was never intended to be representative but was a selection of those witnesses most likely to be favourable to the parties' case.
- I adopt Lewison LJ's observation in paragraph 64 (without being cynical) "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".
- A practice grew up of requiring directions to be sought before evidence generated by a witness collection exercise was admitted. This was done in this case and Mann J made an order on 20th April 2011 (inter alia) giving AETN permission to administer questionnaires to members of the public in the form attached to that order.
- Provisions were made (paragraph 8) for any party to object to any statements being read by the trial Judge by 23rd December 2011. No objection was made. However I do not see that the order made by Mann J can bind me as to what evidence I decide to hear or not as the case may be at the trial. Nor of course did his order attempt to give any indication as to the weight (if any) to be attached to any such evidence.
- In giving the permission Mann J sought to identify the underlying rationale for the practice. In A&E Television Networks LLC v Discovery Communications Europe Ltd  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)."
- As (perhaps) anticipated by Mann J there was a large amount of skirmishing over the evidence adduced by AETN before me. Interflora criticised Mann J's approach as being too cautious and submitted there should be a single application to consider the merits. In fact the Court of Appeal said that Mann J's approach was understandable because the way the practice developed but was not cautious enough. As Lewison LJ reminded us (in the context of a trade mark infringement claim) the purpose of this exercise is to find evidence of the effect of the issue on a "hypothetical legal construct: the reasonably well informed and reasonably observant [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.
- This evidence is vital for AETN's case. It was said as much in its opening and was reaffirmed in its closing:-
"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."
- Without this evidence AETN in my view has no case because none of the other evidence has any weight at all.
- but the evidence does not stand proxy for the persons or construct through whose perception the legal question is to be answered. This is what Lewison LJ said in the Marks & Spencer case at paragraph 135:-
"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."
- He came to that conclusion having reviewed most of the authorities (but not all: see the Group Lotus decision above paragraph 233 and following).
- He then went on to consider when such evidence would be relevant see the following paragraphs:-
"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."
- He also imposed further restrictions on the admissibility of such evidence:-
"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! Entertainment Television Inc (and followed by Mann J in A & E Television Networks LLC v Discovery Communications Europe Ltd §8 (v)) should no longer be followed".
- Lewison LJ then gave fresh guidelines as to the procedure and form of orders:-
"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! Entertainment Television 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  EWHC 1497 (Pat);  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:  EWCA Civ 24;  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."
- Finally on this question of principle as to admissibility he made observations on the question of waiver of privilege:-
"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."
- In the present case there was quite a tussle over the privileged part of preparation of witness statements. In respect of live witnesses AETN objected to the production of any of the privileged material which led to the preparation of the witness statements of the live witnesses. I upheld that objection. It also objected to any cross examination of such witnesses in respect of the preparation of their witness statements. I upheld that objection too.
- Somewhat bizarrely however in the case of the witnesses who were not called and were subject to CEA notices the material leading up to the statements was disclosed. As I shall set out below this led to considerable cross examination of the solicitors who took down the answers that the proposed witnesses gave and transformed them in to draft witness statements which were never approved or signed. I will comment on this further below.
- However 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. Lewison LJ has of course introduced a different procedure. As his judgment shows in order to save costs the instinctive approach of the Judges is reversed. Generally Judges at an interim stage would as a matter of instinct leave the question of admissibility of the evidence and its relevance to the trial Judge. As I say that is a natural instinct. However his judgment shows that the opposite should happen. Evidence like this should not be permitted to be adduced unless the person seeking to adduce it before the trial establishes that it has some probative value. Clearly postponing that to trial leads to the incurring of unnecessary costs if it turns out that the evidence is rejected by the trial Judge. As Lewison LJ pointed out the sifting process should properly be done before trial. It is not the kind of thing which should be sprung upon the Judge in a busy interim applications Court. These decisions will require a detailed consideration of the case and the evidence. It seems to me inevitable that if evidence like this is sought to be produced a party seeking to rely on such evidence must inevitably have that decision determined by a Judge where the hearing is fixed specifically for that decision.
- As I said I nevertheless heard the evidence and given that, in spite of the Marks & Spencer case, I will go on to consider the effect of that evidence. I believe it would be wrong given the stage this action has reached for me retrospectively to disregard evidence now despite the fact that I would not have allowed it if I applied the Marks & Spencer guidelines.
DETAILED CONSIDERATION OF VIEWER EVIDENCE
- The first point to note is what is the purpose of this evidence (if it is not survey evidence)? AETN correctly submits that the purpose of the evidence is to assist the Court in adopting the correct viewpoints referring to Jacob J (as he then was) in Neutrogena  RPC 473 at 486:-
"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."
- On appeal Morritt LJ (page 497) said the purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. The purpose of this evidence was to provide evidence to assist the Judge's assessment: see again Jacob J in Neutrogena:-
"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  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  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".
- Although Jacob J in that extract expressed doubt about his own view as being less reliable the older he became it is interesting to note that in the review of cases by Lewison LJ in Marks & Spencer as set out above almost all of the cases showed that the relevance of this material ultimately was whether or not it assisted the Judge's own view which he formed. If such evidence assists his view then it is of probative value.
- The Court is concerned for the purpose of trade mark infringement with the average consumer who is deemed to be reasonably well informed reasonably observant and circumspect. He is a notional individual.
- For the purposes of passing off the Court is concerned whether or not a substantial proportion of the relevant public are deceived and that such deception causes real damage. In order to be deceived those members of the public must be within the envelope of AETN's goodwill.
- The tests are different but very similar. It seems to me that the inadequacies of questionnaire evidence as identified in the Marks & Spencer case in relation to trade marks is equally applicable to the test required to establish passing off. The evidence in my view is statistically insignificant and on examination was of no use in assisting me in deciding whether the relevant persons as set out were or would be deceived.
- A total of 8 witnesses gave live evidence. In addition I had Civil Evidence Act notices in respect of a number of witnesses. I had 3 unsigned witness statements namely Jane Brown, Michael Whiting, and Mr Brooks.
- I had 8 signed witness statements namely Peter Marley, Lydia Rodney, Martin Keddie, Simon Clarke, Gavin Sanders, Ryan Taylor, Jason Gibbs and Geoffrey Webb.
- Various reasons were given as to why they were unable to attend from being unwilling to attend because of the time it would involve or (in the case of 4 of the witnesses) because AETN's solicitors could not contact them.
- The completed questionnaires and attendance notes of 4 Respondents were put in evidence namely Wayne Starkey, Claire (no surname), Adrian Mason and Mark Leach.
HOW THIS EVIDENCE WAS OBTAINED
- The way in which AETN acquired this evidence is set out in the evidence of Cassandra Ellen Gilbert, a solicitor in AETN's firm of solicitors. After obtaining permission per the decision of Mann J to conduct a full questionnaire exercise following an earlier pilot, questionnaires were administered by trainee solicitors and one newly qualified solicitor. They were conducted at 18 locations in London and surrounding areas of London between 12th May 2011 and 20th July 2011. A total of 1,004 full questionnaire forms were completed.
- The solicitors decided to contact 167 of the respondents and were able to speak to 116. 14 witness statements were obtained from respondents to the full questionnaire exercise.
- AETN asserted privilege in respect of the communications between the live witnesses and their solicitors. As paragraph 153 of the judgment in Marks & Spencer shows the assertion of privilege probably reduces the potential probative value of any such evidence.
- In respect of the Civil Evidence Act documentation AETN did waive privilege and provided (eventually) all of the material in respect of such statements. I said "eventually" because some of the material was only produced during the course of the trial.
- That material has led Discovery in its closing to criticise the method of the gestation of the draft witness statements in the case of the CEA evidence.
- In my view such criticisms are justified. The exploration of the gathering of the secondary evidence demonstrated the whole fallibility of this type of evidence. I am not going to criticise individuals responsible for the gathering exercise. Nor do I infer from that evidence necessarily that the same failures applied to the evidence gathering in respect of the live witnesses. I refer to the Defendants' closing and the significant criticism of that exercise. I was concerned particularly for example that several witnesses were cold called after the initial interview. While they were speaking on the telephone the relevant solicitor took notes on what was being said. Only when that was finished did she reveal that the questions were for litigation. I have no doubt most people thought they were responding to a customer survey questionnaire. Some witnesses expressed the view that they were unwilling to give evidence. One of them (Wayne Starkey) said he was unwilling to give evidence because it would cause trouble with his employer.
- None of these witnesses who expressed unwillingness understood (because they were not told) that a note was being made of the conversation and that AETN would then serve that note as being a hearsay statement of the evidence they would give. It was thus unapproved and as the cross examination of the solicitors showed (as summarised in 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).
- This case demonstrates the need for solicitors preparing witness statements to curb their enthusiasm in seeking to obtain the best for their clients. It must not be forgotten that witness statements are merely a replacement for evidence which a witness previously used to give live in chief. It is intended to be the factual evidence of the witness in his own words. Too often witness statements are drafted by solicitors who put words in their mouth to achieve a better result. Witness statements can then be changed from drafts to a later stage without the witness understanding the significance of the change. An extreme example of this kind of activity was highlighted by me in a statement I made in the Farepak case. In this case too it is clear that statements were "finessed" to present them in a more favourable light from AETN's point of view without the witnesses understanding what was happening. This is unfair to witnesses. They should not be required to justify witness statements when the true effect of them is not understood by them.
- Further when preparing hearsay statements it is even more incumbent on the solicitors not to manufacture things to put that evidence in the best light for their clients. The Court will not have any opportunity to explore that evidence with live witnesses and the duty on the solicitors is therefore even more clear to confine witness statements to what the witness would have said in his own words had he or she been giving evidence.
- Equally I do not think it is appropriate for a witness to have his statement taken from him when he does not realise that it is being taken from him for the purpose of giving evidence. That too is unfair. Further when such a person objects to giving evidence it cannot be appropriate in my view for that statement which has been taken down to be served up as a hearsay statement without reference to that potential witness (the more so when he has said he does not want to give evidence). Without the investigations in cross examination in this case none of the actual defectiveness of the hearsay statements would have come to light.
THE LIVE EVIDENCE
- In my view the evidence showed that there was no clear pattern from the witnesses as to how they found channels. Further it was clear that a significant number of the live witnesses would probably not be regular viewers of these competing channels. As set out above the viewers of these channels are predominantly middle aged men (subject to History's new lower (49) viewing age based on their new "History" programmes). The evidence showed that there were many ways of accessing channels and I do not see that any clear picture emerged from these witnesses to show there was any possible confusion between History and 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.
- My conclusion is that this live evidence did not support AETN's contention that these witnesses were confused into believing Disc History or 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.
- Even if it did once again in my view none of this evidence satisfies the need to produce the requisite viewer as set out above in respect of trade mark infringement and passing off. This reflects what Lewison LJ said in the Marks & Spencer case that there is nothing new in that proposition. The Courts have regularly considered these issues on a fact basis. The present case is no different in my view. Despite the plethora of authorities the case is essentially one of facts.
- In my view the primary live evidence does not establish for the reasons set out above that there is likely to be any confusion of the hypothetical viewer required to be identified and shown to be confused for the purpose of trade mark infringement and passing off. As I have said that assumes that AETN overcome (which they have not) the primary obligation of demonstrating that the use of the word History is not descriptive.
- This conclusion in my view is supported by the clearly inadequate secondary evidence of the other questionnaire respondents. Nothing clearly is made out.
- The employee witnesses were of no use beyond expressing their own opinions which were hardly objective as the cross examination (for example of Mr Davidson) showed.
- Further the failure to challenge the creation of UK History demonstrates in my view that this conclusion is correct. I cannot ignore the lame response of AETN to that challenge. This issue was identical in my view and demonstrates that at that time AETN did not believe they had any cause of action. It is also supported by Sky's stance. I hasten to confirm however that those two points are merely supportive of my primary conclusion.
- Accordingly in my view the Claimants have failed to establish any infringement of their trade marks and any passing off by Discovery by the use of the word History in the title of Discovery's channel Disc or Discovery History.
- Very little was said about logos. I have included them in the judgment above. I do not see how it can be considered that they are confusingly similar and I do not accept there is any evidence that shows the trade marks which include the word History have been infringed.
- I conclude therefore that AETN has failed to establish any breach of its trade marks and/or passing off by Discovery's channel Disc History/Discovery History as so described. I accordingly dismiss AETN's action.
- I do not accept that the trade marks are invalid. I have simply decided that Discovery's action have not infringed them. I therefore find that the Counterclaim similarly fails.
- As ever I was greatly assisted by both parties' written and oral submissions in coming to the conclusions that I have.