Scottish Court of Session Decisions

This is a reclaiming motion against an interlocutor of the Lord Ordinary dated 26 August 1999 refusing the pursuers' and reclaimers' motion for interim interdict in terms of the first conclusion of the summons. The interdict sought is directed, in particular, against the use by the defenders and respondents, without the pursuers' and reclaimers' consent, of the word "Discovery" or any other word similar to or capable of being confused with the pursuers' trade marks "The Discovery Channel" and "Discovery Channel" or either of them in or in relation to radio broadcasting.

The Lord Ordinary, in a careful Opinion, has set out in detail the factual background of the dispute between the parties and we do not find it necessary to repeat what he has said. For our purposes it is, we think, sufficient to note that the U.K. registered mark, "The Discovery Channel", was registered in February 1991 in Class 38 in respect of, "Cable, satellite and over-the-air television and radio broadcasting; all included in Class 38". There is added what we think must be a "condition" or "limitation" within the meaning of section 4(2) of the Trade Marks Act 1938 to the effect that "Registration of this mark shall give no right to the exclusive use of the word 'Channel'". It was submitted by Mr. Davidson, for the reclaimers, that the effect of this condition or limitation was to confer on the reclaimers the exclusive use of the word "Discovery" but we find ourselves unable to accept that construction. Instead we take the view that the effect of what seems to us to be properly regarded as a "limitation" is no more and no less than to preclude any allegation of infringement based solely or partly on the use of the word "Channel". This, we think, effectively disposes of a new argument by the reclaimers, based on a recent amendment of the pleadings, that the respondents' operation of a radio station under the name of "Discovery 102" involves the use of a sign "identical" with the registered trademark and is thus struck at by section 10(1) of the Trademarks Act 1994.

Turning then to the argument which was advanced to the Lord Ordinary, namely that the sign was "similar" to the registered trade mark and was used in relation to services identical with or similar to those for which the trade mark was registered (within the meaning of section 10(2)(b) of the 1994 Act) the operative question is whether, in terms of the concluding provisions of section 10(2)(b), "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark". In answering that question the Lord Ordinary took the view that, while the pursuers and reclaimers had demonstrated a prima facie case, that case was a "relatively weak one" and that, overall, the balance of convenience favoured the defenders and respondents.

It was submitted by Mr. Davidson, for the reclaimers, that in reaching the view he did the Lord Ordinary misdirected himself in certain material respects. Firstly, he had clearly been influenced by the consideration that the provenance of the word "Discovery", so far as the respondents were concerned, was that the City of Dundee, to which the respondents' local radio service was proposed to be directed (and is presently directed), is well known locally as "The City of Discovery". According to Mr. Davidson that was irrelevant when it came to the matter of assessing the likelihood of confusion. Secondly, the Lord Ordinary had attached some weight to the consideration 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, again, said Mr. Davidson was an irrelevant consideration viewed on its own. And thirdly, and, to our minds, much more importantly, it was submitted that the Lord Ordinary had misdirected himself in taking the view that

As to this last matter, it was only in answer to a question from the Court that there was produced the authority of Origins Natural Resources Inc. v. Origin Clothing Limited [1995] F.S.R. 280. At p. 284 of that Report Mr. Justice Jacob said this:

Mr. Dewar, for the respondents, did not seek to impugn this statement of the legal position but sought to explain it as still requiring a comparison with the form of use actually intended by the holder of the mark rather than with the potential uses covered by the registration. In that connection Mr. Dewar emphasised the difference in content between the radio station proposed by the reclaimers and that now operated by his clients. In our opinion, however, it is clear from what is said by Mr. Justice Jacob that what must be envisaged is any "normal and fair" use of the registered mark and that, it seems to us, must cover any normal and fair potential use of the mark, "The Discovery Channel", in connection with, inter alia, radio broadcasting. In any event, we are far from satisfied that a difference in the content of radio programmes is of itself sufficient to avoid confusion otherwise caused by similar names. There was no real answer, in our view, to the first and second submissions noted above and, in the result, we are satisfied that, despite a careful analysis, the Lord Ordinary did fall into error as contended for by Mr. Davidson. In saying that we recognise, of course, that the Lord Ordinary did not have the benefit of the much fuller argument which we heard in relation to the third of Mr. Davidson's submissions.

It follows that matters are now at large for this court and, in light particularly of the exposition of the law by Mr. Justice Jacob, we have to say that in our view the pursuers' prima facie case, far from being "relatively weak" is, in fact, extremely strong. In short, while up to now the reclaimers have only used their registered mark in relation to television, it is necessary, in our view, to test the likelihood of confusion on the part of the public on the hypothetical basis that, in terms of their averred intention, the reclaimers start operating a U.K. wide radio station called "Discovery Channel Radio". If they were to do that it seems to us almost self evident that there would indeed be a likelihood of confusion - at least in the locality of Dundee - with any channel operated by the respondents under the name of "Discovery 102". If that is so, then we do not think that the remedy of interim interdict can be withheld. We say that even bearing in mind the Lord Ordinary's assessment that the grant of interim interdict would be likely to cause the respondents much greater material loss than would be occasioned to the reclaimers by the refusal of such an order. That assessment was itself criticised by Mr. Davidson but on this matter we do not see sufficient reason to differ from the Lord Ordinary.

In reaching the above conclusion we have not overlooked two submissions advanced by Mr. Dewar with which we now deal briefly. First, it was submitted that because the provenance of the word "Discovery", as used by the respondents, was the City of Dundee, it could not be regarded as being "used in a trade mark sense", that being an implicit requirement of infringement under section 10 of the Act. This submission was based on a decision, or at least certain obiter dicta, of Lord McCluskey in Bravado Merchandising Services Ltd. v. Mainstream Publishing (Edinburgh) Ltd. 1996 S.L.T. 597, particularly at p. 600. However, we, for our part, prefer the reasoning of Mr. Justice Jacob in British Sugar plc v. James Robertson & Sons Limited [1996] RPC 281 at p. 291 et seq where Mr. Justice Jacob declines to follow the approach in Bravado - an approach, incidentally, which was based on a concession - and sees "no need to put any gloss upon the language of section 10". Mr. Dewar's second submission, which was closely allied to the first, was based on section 11(2) of the Act which provides that a registered trade mark is not infringed by, inter alia, "(b) the use of indications concerning the...geographical origin...or other characteristics of...services...". Since the use of the word "Discovery" could be equated to a reference to Dundee the argument was that the name of the radio station was simply an indication of its geographical origin. Whatever might otherwise be the merits of this submission we are, however, of opinion that section 11(2) has no application where the mark or sign in question is used to any degree as a trade mark and, despite Mr. Dewar's submissions to the contrary, we are satisfied that even if the word "Discovery" derives from the City of Dundee it is nonetheless used as a trade mark by the respondents. This matter is again fully considered by Mr. Justice Jacob in British Sugar plc v. James Robertson & Sons Limited cit. sup. at p. 297 et seq and we gratefully adopt all that he says in the relevant passage of his judgment, including what he says regarding the significance of Article 6 of the European Directive upon which the 1994 Act was based. In particular, we respectfully adopt his view that section 11(2) is concerned essentially with the incidental use of a mark or sign for descriptive purposes only. Mr. Justice Jacob concludes:

If this conclusion is correct - and we consider that it is - then it avails Mr. Dewar nothing to establish that the defenders' mark is descriptive if, at the same time, it operates as a trademark.

Before closing we think it right to mention that the 1994 Act, like its predecessor, does make provision for the registration of a trade mark to be revoked in whole or in part where no proper reasons are shown for non-use within the period of five years following the date of registration - vide section 46 of the Act. This simply reinforces our view that, so long as it is not revoked, the likelihood of confusion for the purposes of section 10(2) of the Act must be assessed on the hypothetical basis that the registered mark will or may be used to the full extent of the protection afforded by the registration.

In the result, this reclaiming motion will be allowed. In order, however, to enable the respondents to effect, or attempt to effect, a change of name for their radio station, without interruption of service, it was agreed that prior to the signing of any interlocutor the case would first be called By Order. That will now be done.