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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch) (01 February 2013) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2013/109.html Cite as: [2013] EWHC 109 (Ch) |
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CHANCERY DIVISION
Rolls Building, Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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A & E Television Networks LLC (2) AETN UK |
Claimants |
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- and - |
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Discovery Communications Europe Ltd |
Defendant |
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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
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Crown Copyright ©
Peter Smith J:
INTRODUCTION
AETN'S CASE
BACKGROUND
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:
PASSING OFF
"So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be. I am ready to believe that in this case genuine mistakes were made. I think they ought not to have been made. In the Vacuum Cleaner case it appeared that ninety per cent of its customers had addressed the Plaintiffs, in the British Vacuum Cleaner Coy., Ltd as the "Vacuum Cleaner Coy". In spite of this fact and of instances of actual confusion Parker J refused to grant an injunction to restrain the New Vacuum Cleaner Coy., Ltd from using the word "vacuum cleaner" in conjunction as part of its registered or other name. So in Turton v Turton (42 Ch D 128) the possibility of blunders by the public was held not to disentitle the defendant form trading in his own name though the plaintiff had long traded in the same name. It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be renered.
I have not troubled your Lordships with many of the numerous cases on this topic. The principles of law are, as I have said, very clear and their application will depend on the facts of each case."
"In my opinion, the doctrine on which the judgment of the Court of Appeal was based, that where a manufacturer has used as his trade-mark a descriptive word he is never entitled to relief against a person who so uses it as to induce in purchasers the belief that they are getting the goods of the manufacturer who has theretofore employed it as his trade-mark, is not supported by authority, and cannot be defended on principled. I am unable to see why a man should be allowed in this way more than in any other to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival". (Per Lord Herschell) and:-
"Cases of this sort must depend upon their particular circumstances. The facts of one case are little or no guide to the determination of another." (Per Lord McNaughten)
"11 Limits on effect of registered trade mark.E+W+S+N.I.
(1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).
(2 )A registered trade mark is not infringed by—
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial matters".
"Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or services or of rendering of the service, or other characteristics of the goods or services;
(a) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters".
VIEWING SKY PROGRAMMES – AN OVERVIEW
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.
x) Websites.
COMPETING CHANNELS – AN OVERVIEW
INCOME
THE DISCOVERY GROUP OF COMPANIES
PROPOSAL PUT TO SKY
"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".
OTHER NAMES
"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."
CONSIDERATION OF WITNESSES
EMPLOYEE WITNESSES
DEFENDANT'S REPUTATION
"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]
VIEWER WITNESSES
"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)."
"7 The Court has heard from 8 members of the public as indicated in opening and acknowledged by the Court, the evidence from these witnesses is very important in this case. It is central to the key issue for trade mark infringement and passing off, in particular, reputation and misrepresentation."
"The upshot of this review is that courts have allowed the calling of evidence of the kind that Interflora wishes to call and have considered it, either in conjunction with or in the absence of a statistically valid and reliable survey. But it is generally of little or no value. Sometimes it does no more than confirm the conclusion that the judge would have reached without the evidence. In passing off cases it sometimes has greater effect, but as I have said more than once, passing off raises a different legal question. Unless the court can be confident that the evidence of the selected witnesses can stand proxy for the persons or construct through whose perception the legal question is to be answered it simply represents the evidence of those individuals. In a case in which the witnesses are called in order to amplify the results of a statistically reliable survey their evidence may be probative. But unless the court can extrapolate from their evidence, it is not probative."
"137 That is not to say that there can never be evidence called in a case of trade mark infringement. The court may need to be informed of shopping habits; of the market in which certain goods or services are supplied; the means by which goods or services are marketed and so on. In addition I must make it clear, however, that different considerations may come into play where:
i) Evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement;
ii) Evidence from consumers is called in order to amplify the results of a reliable survey;
iii) The goods or services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge's experience;
iv) The issue is whether a registered mark has acquired distinctiveness; or
v) Where the cause of action is in passing off, which requires a different legal question to be answered.
138 Outside these kinds of cases there may be others where a judge might think that it would be useful to hear from consumers. I would not wish to rule out the possibility. So I would not accept the proposition that evidence from respondents to a questionnaire can never be called in the absence of a statistically valid and reliable survey. But (apart from those I have mentioned) the cases in which that kind of evidence might be of real use are difficult to imagine. I would not therefore hold that such evidence is inadmissible as a matter of law.
139 However, it does not follow that if evidence is technically admissible, the court in civil proceedings must admit it. CPR 32.1 provides:
"(1) The court may control the evidence by giving directions as to –
(a) the issues on which it requires evidence;
(b) the nature of the evidence which it requires to decide those issues; and
(c) the way in which the evidence is to be placed before the court.
(2) The court may use its power under this rule to exclude evidence that would otherwise be admissible."
140 CPR Part 1.4 provides:
"(1) The court must further the overriding objective by actively managing cases."
141 This is a positive duty placed on the court. CPR Part 1.4 (2) goes on to say that active management of cases includes:
"(h) considering whether the likely benefits of taking a particular step justify the cost of taking it."
"The current practice, which Arnold J understandably followed, is to allow the evidence in unless the judge can be satisfied that it will be valueless. In my judgment that is the wrong way round. I consider that, even if the evidence is technically admissible, the judge should not let it in unless (a) satisfied that it would be valuable and (b) that the likely utility of the evidence justifies the costs involved.
It follows, in my judgment, that the approach that I took in UK Channel Management Limited v E! 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".
"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 [2010] EWHC 1497 (Pat); [2010] FSR 28 Mann J held that although a witness collection exercise might not fall within the literal effect of the order, it nevertheless fell within the vices which such an order was designed to eliminate. His decision in this respect was upheld by this court: [2012] EWCA Civ 24; [2012] ETMR 17. Whether this was right as a matter of interpretation of the order does not matter. What matters is that the purpose of the order is, as Kitchin LJ put it in Specsavers:
"to avoid the spending of time and money on what is clearly irrelevant and unsatisfactory evidence."
For the future, the standard form of order should be redrafted so as to make it clear that:
A party may conduct a true pilot survey without permission, but at his own risk as to costs;
No further survey may be conducted or adduced in evidence without the court's permission; and
No party may adduce evidence from respondents to any survey without the court's permission.
In deciding whether to give permission, the court must evaluate the results of whatever material is placed before it. Only if the court is satisfied that the evidence is likely to be of real value should permission be given. The reliability of the survey is likely to play an important part in that evaluation. Even then the court must be satisfied that the value justifies the cost. As Mr Hobbs said, this requires the court to conduct a cost/benefit analysis. In a case of trade mark infringement in which the issue is one of deception in relation to the provision of ordinary consumer goods or services, these criteria are likely to be satisfied only in a special or unusual case.
If what is sought is permission to carry out a survey, the applicant should provide the court with:
The results of any pilot survey;
Evidence that any further survey will comply with the Whitford guidelines; and
The cost of carrying out the pilot survey and the estimated cost of carrying out the further survey.
If what is sought is permission to call witnesses who have responded to a survey or other experiment, the applicant should:
Provide the court with witness statements from the witnesses proposed to be called;
Demonstrate that their evidence will be of real value in deciding the issues the court has to decide;
Identify the survey or other experiment and, in the case of the administration of a questionnaire disclose how many surveys have been carried out, exactly how those surveys were conducted and the totality of the number of persons involved and their answers to all questions posed;
Disclose how the proposed witnesses were selected from among the respondents to the survey; and
Provide the court with the cost of carrying out the pilot survey and the estimated cost of carrying out any further work in relation to those witnesses."
"It may have a material effect on the court's decision whether (and if so to what extent) the applicant is prepared to waive privilege in so far as it attaches to the selection, interviewing and preparation of witness statements for the witnesses proposed to be called. In the absence of a waiver of privilege in this respect, a party who wishes to challenge the evidence is likely not to be able to do so effectively; and in particular would not know what questions were asked of the witness in order to prepare the witness statement. If the evidence proposed to be called cannot be effectively challenged, that may in itself reduce its potential probative value."
DETAILED CONSIDERATION OF VIEWER EVIDENCE
"Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to be useful have all involved some of the "Pollees" coming to court."
"The proper approach of the Court to the question was not in dispute. The Judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall "jury" assessment involving a combination of all these factors, see "GE" Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the Court, not for the witnesses. It follows that if the Judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the Judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more "it depends on the evidence".
DECEPTION
HOW THIS EVIDENCE WAS OBTAINED
THE LIVE EVIDENCE
CONCLUSION
COUNTERCLAIM