Discovery Communications Inc v Discovery FM Ltd [1999] ScotCS 248 (28 October 1999)

Discovery Communications Inc v Discovery FM Ltd [1999] ScotCS 248 (28 October 1999)

The likelihood of confusion must be assessed on the hypothetical basis that the registered mark may be used to its full extent, including radio broadcasting; the use of 'Discovery' by the respondents is likely to cause confusion with the pursuers' mark, and the limitation on 'Channel' does not affect the exclusive use of 'Discovery'. Section 11(2) does not protect the respondents as the mark is used as a trademark, not merely as a geographical indication.

Citation
[1999] ScotCS 248
Parties
Pursuers and Reclaimers: Discovery Communications Inc.; Defenders and Respondents: Discovery FM Limited
Jurisdiction
Scotland
Judgment Date
28 October 1999
Procedural Posture
Reclaiming Motion (appeal) Against Refusal of Interim Interdict / Appeal From Interlocutor Refusing Interim Interdict
Outcome
Reclaiming motion allowed
Legal Topics
Interim Interdict, Trademark Infringement, Likelihood of Confusion, Use of Trademark in Broadcasting, Descriptive Use and Geographical Origin
Intellectual Property Trademark Law Interim Interdict Trademark Infringement Likelihood of Confusion Use of Trademark in Broadcasting Descriptive Use and Geographical Origin

Case Brief

Summary, issues, holding and outcome

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Parties

Discovery Communications Inc.

Pursuers and Reclaimers

Discovery FM Limited

Defenders and Respondents

Procedural Posture

Reclaiming Motion (appeal) Against Refusal of Interim Interdict / Appeal From Interlocutor Refusing Interim Interdict

Legal Issues

  1. 1 Whether the use of 'Discovery' by the respondents infringes the pursuers' registered trademark under section 10(2)(b) of the Trade Marks Act 1994
  2. 2 Whether the Lord Ordinary erred in assessing the likelihood of confusion and the balance of convenience
  3. 3 Whether the use of 'Discovery' is protected as a geographical indication under section 11(2) of the Act

Ratio Decidendi

The likelihood of confusion must be assessed on the hypothetical basis that the registered mark may be used to its full extent, including radio broadcasting; the use of 'Discovery' by the respondents is likely to cause confusion with the pursuers' mark, and the limitation on 'Channel' does not affect the exclusive use of 'Discovery'. Section 11(2) does not protect the respondents as the mark is used as a trademark, not merely as a geographical indication.

Court Disposition

Reclaiming motion allowed

Orders

  • Interim interdict to be granted against the respondents, subject to a By Order hearing to allow for a change of name without interruption of service