'History' merely identifies characteristics of channel providing historical programmes

In A & E Television Networks LLC v Discovery Communications Europe Ltd ([2013] EWHC 109 (Ch), February 1 2013), the High Court has held that the TV channel name 'Discovery History' did not infringe AETN UK's various registered trademarks for THE HISTORY CHANNEL and HISTORY. The word 'history' merely identified the characteristics of its service and was descriptive of a channel providing historical programmes.

In 1995 the claimants (collectively referred to as 'AETN') launched The History Channel in the United Kingdom and registered THE HISTORY CHANNEL as UK and Community trademarks for cable and television broadcasting services. In 2008 AETN rebranded The History Channel to History and registered HISTORY as a figurative Community trademark.

Discovery Communications Europe Ltd broadcasts cable and satellite channels in the United Kingdom. In 2010 Discovery announced plans to change the name of one of its subsidiary channels to Discovery History.

AETN conducted a pilot survey to ascertain whether the proposed new name would cause deception in the minds of the viewing public. The initial feedback was positive and AETN brought proceedings against Discovery. Permission was granted for AETN to admit the results of the pilot survey as evidence in claims for trademark infringement and passing off against Discovery and for AETN to conduct a further survey. The results of that survey formed the main evidence for AETN's claims. Discovery counterclaimed for invalidity of AETN's trademarks.

Smith J considered that, because of the effect of Section 11(2)(b) of the Trademarks Act and Article 12(b) of the Community Trademark Regulation (207/2009), there was no basis upon which AETN could stop Discovery from using the word 'history' on its own since it merely identified the characteristics of its service. There was, in his opinion, no word more appropriate than 'history' to describe the contents of a channel broadcasting historical programmes. He found no basis for AETN to stop Discovery from using the word 'history' in conjunction with 'discovery', which, in the judge's opinion, distanced Discovery's channel from AETN.

Smith J noted that the risk of confusion as a result of using common words for a trade name was inevitable unless the first user was allowed to unfairly monopolise the words. He found that the court would accept comparatively small differences as sufficient to avert confusion.

Smith J also noted that AETN's History Channel had previously co-existed with a TV channel called UK History (2002-2004) and UKTV History (2004-2009). AETN had complained about the use of the word 'history' but did not pursue the matter further. Although UKTV History was no longer a relevant competitor, the fact that AETN remained silent for seven years was interpreted by Smith J as:

"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". 

This previous use of the word 'history' by another TV channel also meant that AETN's claim of goodwill inherent in that word was invalid. Smith J noted that AETN would have litigated if there has been a serious belief regarding confusion and damage to goodwill and trademarks.

Smith J accepted that AETN had established goodwill in the expression 'The History Channel' up until 2008 when the channel rebranded. There was no evidence that the goodwill had disappeared. However, the existence of such goodwill was not considered relevant due to the highly descriptive nature of the word 'history'. 

Smith J was highly critical of AETN's witness gathering exercise, expressing concern that several witnesses were cold-called after the initial interview and not informed until after speaking with a solicitor on the telephone that the questions were for litigation. None of those witnesses understood (as they were not informed) that the conversation was being noted and that AETN would serve that note as hearsay evidence. In Smith J's view, the process was blatantly unfair to witnesses as "the cross-examination of the solicitors showed that the final statements did not necessarily reflect what was being said."

Smith J concluded that AETN failed to establish trademark infringement or passing off, and rejected Discovery’s counterclaim for invalidity of AETN's trademarks.

The use of descriptive words such as 'history' as part of a trademark provides consumers with useful information as to what to expect from certain goods or services. However, although even a commonly used term such as 'history' is capable of acquiring goodwill and reputation as a trademark, it can be difficult to prevent competitors from using such a word for their own goods and services. The risk of confusion with a competitor business may therefore prove legally impossible to prevent.

Désirée Fields, McDermott Will & Emery UK LLP, London