Scottish Court of Session Decisions

The pursuers aver that they are a company incorporated in the United States of America, and have a place of business in Maryland. They aver that they are the registered proprietors of two trade marks, namely (1) UK trade mark No. B1360001 in respect of the mark "The Discovery Channel" and (2) Community trade mark No. 000153403 in respect of the mark "Discovery Channel". These marks, it is averred, are registered in class 38, in respect of communications services, in particular radio, cable and broadcasting services. In fact, in the registration certificate in respect of the UK trade mark the category is differently expressed - "cable, satellite and over-the-air television and radio broadcasting", but for the purposes of the present case nothing seems to turn on that difference. In this action the pursuers seek interdict against the defenders on the basis of allegations that the defenders are about to infringe these trade marks by launching a local radio station in the Dundee area under the name "Discovery 102". The pursuers' motion for interim interdict came before me on 26 August 1999, when I heard submissions for both parties.

The pursuers aver that within Europe, including Scotland, they operate through Discovery Communications Europe, a general partnership formed in the United States between their wholly-owned subsidiaries, Discovery Productions Inc and Discovery Communications Limited; and that through Discovery Channel (sic) Europe they provide daily non-fiction entertainment television programming to 15.5 million households in many European countries, including the United Kingdom. They aver that they have used the mark "The Discovery Channel" in the United Kingdom continuously since 1989; that the first use of the marks was in connection with the provision of television programmes, but that they have since been used in respect of a large number of goods and services, in particular broadcasting services, educational and entertainment services, on-line services and related publishing; and that they have also been used in various forms of merchandising. They aver, further, that they are registered proprietors of other trade marks which include the word "discovery", and are applicants for more. The marks, they aver, are employed in connection with extensive press, television and radio advertising of their services; they advertise on local radio stations, including Tay Radio; in 1998 their channel "Discovery Scotland" reached 67.3% of cable and satellite subscribers, some 873,000 people; their marks have come to indicate services and goods supplied by them; and they have at all times taken appropriate steps to protect the marks.

The pursuers make further averments about their intention to use the marks in connection with radio broadcasting, which may be summarised as follows. They and Discovery Communications Europe intend to launch a radio service called "Discovery Channel Radio". The project was first mooted in 1997, and in the course of 1998 they undertook preparations including the making of a pilot programme. They intend the service to be funded partly through sponsorship. It is intended as an extension of their existing television brand into the "new medium" of radio. They intend to supply half-hour programmes with what they describe as a Discovery Channel content, to be broadcast throughout the world, initially via radio stations owned by other broadcasters and their own internet sites. They have already publicised the intended launch in trade publications and in presentations to potential sponsors; discussions are in progress with sponsors; the launch is expected to take place as soon as sufficient funding is in place. Nothing more is said in the pursuers' averments about when the launch of their proposed radio service is likely to take place.

The defenders are a subsidiary of Independent Radio Group plc, which operates a number of commercial radio stations within the United Kingdom. The pursuers aver that it was at the beginning of August 1999 that they first became aware that the defenders intended to launch a radio station in Dundee at the end of August, using as the name of the station "Discovery 102". They aver that that came to their notice as a result of a brief item in the July 1999 issue of "Broadcast" magazine, and that subsequent investigation has disclosed that in 1998 the Radio Authority awarded the defenders a licence to operate a commercial radio station in the Dundee area, which licence runs until 2007.

The basis of the action is the assertion that the defenders' intended acts will constitute infringement of the pursuers' marks. Section 10(2) of the Trade Marks Act 1994 provides that:

2. the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

The corresponding provision of Council Regulation (EC) No. 40/94, namely Article 9.1(b), is differently expressed, but it was accepted in the course of the discussion before me that there was no material difference in substance. The pursuers' case on averment is (i) that the name which the defenders propose to use for their radio station - Discovery 102 - is similar to the marks; (ii) that the services intended to be provided by them - radio broadcasting services - are identical to the services in respect of which the marks are registered, namely communications services, in particular radio, cable and broadcasting services; (iii) that the distinctive part of the marks is the word "discovery"; (iv) that the pursuers are regularly referred to as "Discovery"; (v) that the defenders in their licence application referred to themselves and their proposed station as "Discovery"; and (vi) that there is therefore a likelihood of confusion, and of the public associating "Discovery 102" with the pursuers' marks.

The pursuers' solicitors wrote to the defenders on 6 August asserting that the launch of Discovery 102 would constitute infringement of their trade marks and demanding in effect that they abandon their plans to use that name for their radio station. (The letter also alleged passing off, but that ground of action is not relied on in the summons.) The response from the defenders' parent company Independent Radio Group plc dated 10 August, the terms of which are incorporated in the pursuers' pleadings, rejected the proposition that the launch of Discovery 102 would infringe the trade marks, and set out the basis on which it was maintained that there would be no likelihood of confusion. It narrated the return of the vessel RRS Discovery to Dundee for permanent berthing in the mid-1980s, and the subsequent investment of money and effort in marketing Dundee as "The City of Discovery", and asserted that both the name and pictorial representation of the ship were now "established icons" in Tayside. Reference was made to the encouragement given to the use of "Discovery" as a link with Dundee, and it was suggested that if people in Tayside was asked to link the name "Discovery" with a concept, 100% of the responses would specify "Dundee, the City of Discovery". The letter went on to explain that it was because of that local association that, when the possibility of obtaining a commercial radio licence to serve the Dundee area arose, the defenders were incorporated under the name "Discovery FM Ltd" in September 1996. The licence had been advertised in December 1997, the details of applicants (including the defenders) had been published in or shortly after April 1998, and the award of the licence was publicised in July 1998. Finally, the letter made the point that the station's transmission area will be limited to Dundee and its immediate area. On that basis it was contended that the use of the word "Discovery" would serve only to link the station with its home city, and there would be no possibility of confusion with the pursuers' trade marks. In light of that response the pursuers aver that they are under the necessity of seeking interdict and interim interdict. Their averments as to the balance of convenience are very brief, but were elaborated in submission.

In opening his submissions on behalf of the pursuers, Mr Johnston indicated that it had been ascertained that the launch of Discovery 102 was to take place on Monday 30 August 1999. The application for interim interdict was therefore a matter of urgency. The pursuers had, he submitted, averred a prima facie case that the launch of Discovery 102 would constitute infringement of their trade marks, and the balance of convenience favoured the granting of interim interdict. In his submissions for the defenders, Mr Dewar accepted that the pursuers had averred a prima facie case of infringement. He made it clear that the defenders proposed in due course to dispute the proposition that the use of "Discovery 102" as the name of their radio station constituted infringement of the pursuers' trade marks, and in the context of the balance of convenience he made the submission that the pursuers' prima facie case was weak, but at this stage he did not dispute that a prima facie case had been averred and that interim interdict should therefore be granted or refused according to where the balance of convenience lay. I therefore turn to consider the submissions that were made on the balance of convenience.

In support of the proposition that the balance of convenience favoured the granting of interim interdict, Mr Johnston invited me to consider eight factors. In some respects they appear to me to merge into each other, but it is convenient to record them initially in the way in which Mr Johnston presented them.

1. The prima facie case of infringement which the pursuers put forward was a strong one. The name which the defenders proposed to use for their radio station was very similar to the pursuers' trade marks, of which the word "discovery" was the key element. The intended service was identical with that in respect of which the marks were registered. The pursuers were commonly referred to simply as "Discovery", and the defenders also used that shortened form in referring to themselves and the proposed radio station. The likelihood of confusion, and in particular of a mistaken association of the defenders' services with the pursuers' trade marks, was therefore obvious.
2. The pursuers had acted swiftly on learning of the intended launch of Discovery 102. They first learned of it from a brief item in the issue of the "Broadcast" newspaper published on 30 July 1999 (No. 6/3 of process). They wrote to the defenders stating their position on 6 August (No. 6/5 of process). The response from the defenders' parent company (No. 6/6 of process) was received on 10 August. The motion for interim interdict was before the court just over two weeks later.
3. The pursuers have used the trade marks in the course of their broadcasting and other trading activities continuously for about ten tears. Those activities have been expanded and diversified. The defenders, on the other hand, have not so far been associated with the word "Discovery" in the context of any actual broadcasting activity.
4. The pursuers themselves have plans for the application of their trade marks to radio programmes, and active steps have been taken in pursuance of those plans. In that connection they may sustain irreparable harm if the defenders are permitted to launch Discovery 102.
5. The defender's service under the name Discovery 102 is not yet in operation.
6. As at 12 August 1999 the defenders still had not been granted their licence to operate a local radio service in Dundee. Mr Johnston founded that submission on the terms of a letter from the Radio Authority dated 12 August which stated inter alia that "a licence has been awarded but not yet granted to Discovery FM Ltd to provide an independent local radio service in Dundee. We are therefore not yet in a position to provide you with a copy of the licence." He was unable to advise me what the distinction was between the "award" and the "grant" of a licence.
7. The pursuers sought only to restrain the defenders' use of a name involving the word "discovery". There was no reason why the defenders had to use such a name. There would be nothing to stop them launching their radio station under some other name.
8. It was accepted that there was a connection between the name "Discovery" and the City of Dundee, but that fact by itself did not take the defenders very far.

Mr Dewar found it convenient to make his submissions on the balance of convenience by responding to the points made by Mr Johnston, and I found it helpful to have the competing contentions ranged against each other in that way.

1. Although accepting that the pursuers had made a prima facie case of infringement, Mr Dewar submitted that it was a weak case. He pointed first to the fact that the trade marks were "The Discovery Channel" and "Discovery Channel". It was the combination of the two operative words, not simply the word "discovery", that the pursuers were entitled to protect. He drew attention to the fact that the registration certificate in respect of the UK mark bore the annotation "Registration of this mark shall give no right to the exclusive use of the word 'Channel'", and suggested that that emphasised the importance of both operative words in the marks. Further, confusion was unlikely to occur because, while people in Dundee would be aware of the pursuers' television channel, they would primarily associate "discovery" with the marketing image of the city rather than with the pursuers' trademarks. Mr Dewar also drew attention to the description of the defenders' proposed programme service as expressed in their licence application form (No. 6/4 of process) - "a fluid mix of Easy Listening and Soft Adult Contemporary artists together with locally focused speech content targeting the 35-64 year old market with a proposed music to speech ratio of 75:25", and suggested that that would tend to reduce the likelihood of confusion.
2. In response to the submission that the pursuers had acted swiftly to protect their trade marks, Mr Dewar pointed out that their vigilance had apparently not been sufficient to alert them to the incorporation of the defenders in 1996 or to the advertisements which had been published in 1997 and 1998 in connection with the licensing process.
3. Although the defenders were not yet actively broadcasting under the name Discovery 102, Mr Dewar confirmed that the launch of the station was planned for Monday 30 August 1999, and the defenders had incurred costs of the order of £50,000 in connection with the launch in that name. These were promotional costs, not the whole costs of setting up the station.
4. So far as the pursuers' plans for radio broadcasting were concerned, Mr Dewar submitted that their existing use of the name related primarily to television broadcasting, not radio. Despite the breadth of the class in which the marks were registered, the marks by their use of the word "channel" clearly pointed to television rather than radio broadcasting. Radio broadcasting was not a present activity of the pursuers. In this respect, therefore, the pursuers were seeking to set up a possible future activity as ground for preventing the defenders from launching a radio service which was immediately ready to commence operation. Moreover, the pursuers' operation was world-wide, whereas the defenders' operation was local to an area which had a clearly established association with the name "Discovery".
5. The pursuers' reliance on the fact that the defenders' service had not yet begun to operate overlooked the fact that the launch was due to take place within days.
6. On the point made by Mr Johnston about the defenders' licence not yet having been "granted" Mr Dewar had no information, but he was not aware that there was any regulatory obstacle to the proposed launch.
7. The pursuers' suggestion that the defenders need not use the name "Discovery" again overlooked the imminence of the launch. Three hundred guests had been invited to the launch on 30 August, and a series of events had been organised for the ensuing week. It was not practicable for the launch to go ahead under a different name.
8. The pursuers' submissions underestimated the impact on the strength of their case of the fact that the name of the defenders' station was a reflection of a well established image of the city of Dundee. That factor, in the context of the local nature of the defenders' operation, rendered confusion of the sort necessary to establish a case of infringement unlikely to occur.

While it was not disputed by the defenders that the pursuers had averred a prima facie case of infringement of the trade marks founded upon, the strength or weakness of that prima facie case is, as both counsel recognised in their submissions, a factor which is relevant to the assessment of whether the balance of convenience is in favour of or against the granting of interim interdict. In considering the strength or weakness of the prima facie case, it is in my view appropriate to bear in mind the separate elements that go to make up a case of infringement under section 10(2)(b) or Article 9.1(b). The sign used, or proposed to be used, by the alleged infringer must first be similar to the trade mark. Secondly, its use must be in relation to goods or services identical with or similar to those for which the trade mark was registered. Thirdly, there must exist, because of the use of the similar sign in relation to identical or similar services, a likelihood of confusion on the part of the public, including a likelihood of association with the trade mark. In the present case, notwithstanding the fact that the sign which the defenders propose to use involves only one of the two operative words of the marks, it seems to me to be clear that the pursuers are likely to establish that the defenders' sign is similar to the marks. To that extent, Mr Johnston was, in my view, right in identifying the word "discovery" as the key element of the marks. That is, to my mind, underlined by the annotation on the registration certificate in respect of the UK mark, which points out that the pursuers have no right to the exclusive use of the word "Channel". So far as the second element is concerned, the breadth of the class in which the marks are registered, which covers radio as well as television broadcasting, enables the pursuers to assert with confidence that the defenders propose to use the similar sign in relation to services identical with or similar to those for which the marks were registered. The strength or weakness of the pursuers' prima facie case therefore seems to me to depend on how likely it is that members of the public will be confused by the use of the name "Discovery 102" as the name of the defenders' radio station, and in particular how likely it is that they will be led to associate the defenders' radio station with the pursuers' trade marks.

In assessing the likelihood of confusion it seems to me (i) that it is relevant to consider not merely whether similarity exists, but the degree of similarity, between the sign used by the alleged infringer and the trade marks, and (ii) that attention may legitimately be focused more on the nature of the services in respect of which the proprietor of the trade mark actually uses it than on the formal breadth of the class in which it is registered, because it will be with its actual use rather than its theoretical scope that the public will be familiar. Applying these considerations to the present case, there is in my view some force in Mr Dewar's point that the marks are "The Discovery Channel" and "Discovery Channel". The presence of the word "channel" in the marks tends, in the ordinary use of that word in the context of broadcasting, to point to television rather than radio broadcasting. That tendency of the language used in the marks is reinforced by the use which the pursuers have made of them. As I understand the position, the marks are primarily used in relation to television broadcasting (and analogous on-line transmission) and related marketing and publishing. Notwithstanding the averments made about the pursuers' intentions to venture into radio broadcasting, I do not understand it to be suggested that anything has yet been done in that connection which would lead the public to associate the pursuers' trade marks with radio broadcasting. Further, setting aside any distinction between television and radio broadcasting, it seems to me that consideration of the content of the pursuers' and the defenders' respective programmes tends to militate against the likelihood of confusion. Mr Johnston did not expand on the nature of the pursuers' broadcasts, beyond the averment that they provide "daily non-fiction entertainment television programming", but it seemed to me that that is quite different from the programme content described in the defenders' licence application. These considerations, of course, fall a long way short of eliminating the possibility of confusion between the defenders' radio station and the pursuers' trade marks, but they do, it seems to me, reduce the likelihood of such confusion.

In my opinion, however, a highly significant factor in the assessment of the likelihood of confusion is the existence of a competing connotation for the word "discovery". In that connection, it is important to note that the radio station which the defenders are about to launch is a local one which will be broadcasting to the city of Dundee and the surrounding area only. The members of the public who would be exposed to the alleged infringement if interim interdict were not granted are therefore primarily the members of the public in the city of Dundee and the surrounding area. The case of infringement depends on the proposition that they will be confused by the use of the name Discovery 102 for the station into associating the station with the pursuers through their trade marks. I accept, however, and I did not understand Mr Johnston to dispute it, that Dundee is well known as "The City of Discovery". The adoption of that name or slogan followed the permanent berthing of RSS Discovery in Dundee. The name of the vessel was seized upon and adopted as a marketing device for the city. The adoption of its name by and in the city is, I understand, now well established. The pursuers did not challenge the good faith of the defenders in selecting the word "discovery" as part of their corporate name and of the name of the radio station because of the strong local recognition of the association between the Dundee area and the name "Discovery". In these circumstances there seems to me to be considerable force in the defenders' contention that the public in the Dundee area is more likely to take the name of the station as a reference to its location in Dundee, the City of Discovery, than as an indication of association with the pursuers' trademarks. Whether on that ground the defenders will ultimately be in a position to resist the contention that there is the likelihood of confusion, and therefore is infringement of the trade marks, will be a matter of evidence. At this stage, however, I take the view that it is a factor which materially reduces the strength of the pursuers' prima facie case. In the circumstances laid before me, I take the view that Mr Dewar was correct in characterising the pursuers' prima facie case as a relatively weak one.

Although I think that Mr Johnston perhaps stretched the point in saying that the pursuers took action swiftly once they learned of the defenders' proposals, I accept that they did not delay inordinately. Having learned from a newspaper published on 30 July of the impending launch of the defenders' radio station, they wrote stating their allegation of trade mark infringement on 6 August. They might have come to court more quickly than they did after receiving the defenders' response on 10 August, but a delay of the order of two weeks is not in my view inordinate. It seems to me, however, that on a broader view of the history of the matter there is some force in the suggestion that if they had been properly vigilant to protect their rights they would have become aware of the defenders' proposals much earlier than they did. The corporate name of the defenders, adopted in 1996, not only incorporates the word "Discovery", but also the initials FM, which point clearly to an association with radio broadcasting. More particularly, the process of licensing radio stations involves advertisement at various stages. The letter from the Radio Authority dated 12 August 1999 discloses that advertisement is carried out not only locally in the area in which the applicant for the licence seeks to operate, but also in specialist broadcasting press. It seems to me to be reasonable to suppose that such advertising is designed inter alia to give those, such as the pursuers, with a competitive commercial interest in the matter information about the licensing process. It seems to me that if the pursuers had been more vigilant, they would have learned of the defenders' proposals over a year earlier than they did, and at a stage when a statement of their opposition would have been less disruptive. That seems to me to be a legitimate factor to take into account in the balance of convenience against the granting of a last-minute interim interdict.

The pursuers founded on their established use of the trade marks in contrast to the fact that the defenders had not yet at the date of the hearing begun broadcasting as "Discovery 102". It seems to me, however, that the matter is more complex than that. On the one hand, none of the pursuers' established use of the marks relates to radio broadcasting. While I accept that they have plans for radio broadcasting, and that they have taken substantial steps towards providing such a service, it seems to me that they are materially further from commencing such a service than the defenders are. I noted in particular that I was given no firm timetable for the pursuers' radio broadcasting project. In that context, the reliance which the pursuers' sought to place on the fact that "Discovery 102" was not yet broadcasting seemed to me to understate the significance of the imminence of the defenders' launch date. The hearing before me took place only four days before that date. A grant of interim interdict would have been destructive of the launch arrangements. While it was no doubt theoretically correct that, as Mr Johnston submitted, the defenders did not need to use the name "Discovery 102" for the station, I readily accepted that it would have been impracticable at four days notice to switch to another name. It seemed to me therefore that to grant interim interdict would be likely to cause the defenders material loss. On the other hand, I found much less persuasive the pursuers' contention that they, and in particular their radio broadcasting plans, might suffer irreparable harm if interim interdict were refused. The defenders plan to operate a local radio station serving the Dundee area. The pursuers operate, and intend their radio service to operate, throughout the world. I find it very difficult to see that, even if the defenders' use of the name "Discovery 102" is an infringement of the trade marks, the launch of the local station under that name would have any material effect on the defenders' world-wide plans.

I did not regard the point made by Mr Johnston by reference to the Radio Authority's letter of 12 August, and the statement in it that the defenders' licence, although awarded, had not by that date been granted, as one of any material weight. In the absence of any explanation of the Authority's use of the terms "awarded" and "granted", it seems to me to be impossible to draw the inference that the letter referred to any real obstacle in the defenders' path. I think it is likely that the "award" of the licence was the substantive decision, and that the "grant" of the licence was the issue of the formal document. Whether I am right or wrong about that, however, I see no real substance in the point.

Having considered all the points made to me by Mr Johnston and Mr Dewar respectively about the balance of convenience, and having formed the views of the principal aspects of those submissions that I have set out, I came to the conclusion that the balance of convenience was not in favour of my granting interim interdict. I therefore refused the pursuers' motion.