The History Channel v The Discovery Channel
Registered Trademark Dispute
A dispute between two popular television channels took place earlier this year.Â (AETN) A & E Television Networks (the owners of the History channel) claimed that DiscoveryÂs use of the television channel name DISCOVERY HISTORY and the abbreviation DISC.HISTORY infringed their registered Community/ UK word and device trade marks containing the term ÂhistoryÂ.Â
Claim for Passing Off
AETN also made a claim against Discovery for passing off and argued that DiscoveryÂs use of the channel name DISCOVERY HISTORY was deceiving viewers into believing that it was associated/connected to and damaging the goodwill /reputation of AETNÂs channels of HISTORY and MILATARY HISTORY.Â
Discovery counterclaimed and contended that AETNÂs use of the term ÂhistoryÂ was an indication concerning the characteristics of the service provided thereby rendering the AETNÂs trade mark registrations invalid. The claim for passing off was defended on the grounds that Discovery already had their own considerable goodwill and that the term ÂhistoryÂ was descriptive. (Trade mark legislation prohibits the registration of trade marks which consist exclusively of descriptions and mere characteristics of goods or services).
Both parties actions against each other were dismissed the judge concluded:
- AETN had no rights regarding the word ÂhistoryÂ, the use of the termÂ was descriptive as it was used in a context to describe a Channel that aired programmes on history. AETN therefore could not restrict the use ofÂ the term, its action for trade mark infringement failed.
- AETNÂs action for passing off failed as the judge held thatÂ DiscoveryÂs use of the word ÂdiscoveryÂ along with history, identified the channel as being associated with The Discovery Channel. The claim for passing off also failed as The Discovery ChannelÂ already hadÂ establishedÂ goodwill as they had been broadcasting for over a long period of time.
- Finally the registrations for AETNÂs marks were held not to beÂ invalid.