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The History Channel v The Discovery Channel

Written by Rehana Ali on 16 April 2013

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The History Channel v The Discovery Channel

Registered Trademark Dispute

A dispute between two popular television channels took place earlier this year.  (AETN) A & E Television Networks (the owners of the History channel) claimed that Discovery’s 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 ‘history’. 

Claim for Passing Off

AETN also made a claim against Discovery for passing off and argued that Discovery’s use of the channel name DISCOVERY HISTORY was deceiving viewers into believing that it was associated/connected to and damaging the goodwill /reputation of AETN’s channels of HISTORY and MILATARY HISTORY. 

Counterclaim

Discovery counterclaimed and contended that AETN’s use of the term ‘history’ was an indication concerning the characteristics of the service provided thereby rendering the AETN’s 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 ‘history’ was descriptive. (Trade mark legislation prohibits the registration of trade marks which consist exclusively of descriptions and mere characteristics of goods or services).

The Conclusion

Both parties actions against each other were dismissed the judge concluded:

  • AETN had no rights regarding the word ‘history’, the use of the term 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 of the term, its action for trade mark infringement failed.
  • AETN’s action for passing off failed as the judge held that Discovery’s use of the word ‘discovery’ along with history, identified the channel as being associated with The Discovery Channel. The claim for passing off also failed as The Discovery Channel  already had  established  goodwill as they had been broadcasting for over a long period of time.
  • Finally the registrations for AETN’s marks were held not to be invalid.
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