Judgment Call: 4 March 2013


Makudi v Triesman. [2013] EWHC 142 (QB). Tugendhat J.

1 February 2013

Evidence of corrupt practices in regard to the bid for the 2018 World Cup given by an MP to a select committee was covered by absolute privilege and discussions he held with counsel appointed by the FA, and counsel’s subsequent reports, were covered by qualified privilege and could not found an action in defamation.

Application granted and claim struck out

For the claimant Makudi

Atkin Chambers’ Andrew Goddard QC; Atkin Chambers’ Simon Crawshaw; Watson Farley & Williams partner Steven Burkill

For the defendant Triesman

One Brick Court’s Clare Kissin; RPC partner Keith Mathieson


(1) Twentieth Century Fox Film Corporation; (2) Universal City Studios LLC; (3) Warner Bros Entertainment Inc; (4) Paramount Pictures Corporation; (5) Disney Enterprises Inc; (61) Columbia Pictures Industries Inc; (the members of the Motion Picture Association of America Inc on their own behalf and on behalf of all the other companies that are controlled by, controlling of or under common control with such members that are the owners, or exclusive licensees, of the copyright in films and television programmes) v (1) David Harris; (2) Kthxbai Ltd; (3) The NZB Foundation; (5) Christopher Elsworth; (6) Motors For Movies Ltd. [2013] EWHC 159 (Ch). Newey J.

5 February 2013

When refusing an application by film studios for proprietary injunctions claiming the whole proceeds of copyright infringement the court reviewed the law on proprietary claims and constructive trusts relating to breach of copyright and found that although a copyright could be the subject of a constructive trust, a copyright owner did not have a proprietary claim to the fruits of its infringement.

Application refused

For the claimants (1) to (61)

Richard Spearman QC formerly of 4-5 Gray’s Inn, now at 39 Essex Street; Wiggin solicitor Rachel Alexander

For the defendants (1) David Harris; (2) Kthxbai Ltd

4-5 Gray’s Inn’s Jane Lambert; JWK Solicitors managing director Craig Hollingdrake


Yam Seng Pte Ltd v International Trade Corp Ltd. [2013] EWHC 111 (QB). Leggatt J.

1 February 2013

The court considered and explained the importance of recognising the doctrine of good faith and fair dealing in all contractual relationships, but especially those involving longer term relationships such as joint venture agreements, franchise agreements and long-term distributorship agreements.

Judgment for claimant


For the claimant Yam Seng Pte Ltd

11 Stone Buildings’ Adrian Salter; Benson Mazure partner Michael Zuckerman

For the defendant International Trade Corp Ltd

New Square Chambers’ David Eaton Turner; Edwin Coe partner Christopher Berry

Eaton Turner
Eaton Turner


R (on the application of Infinis plc) v Gas and Electricity Markets Authority. [2013] EWCA Civ 70. Sir James Munby (President, Fam); Sir Terence Etherton (Chancellor); Sullivan LJ.

13 February 2013

The authority had been wrong to refuse accreditation for two power stations on the basis that they fell within exclusions under the statutory scheme for accreditation of non-fossil fuel generating stations. Since the refusal had caused the stations’ owners and operators a clear and calculable financial loss they were entitled to damages by way of just satisfaction under the Human Rights Act 1998 s.8 as a result of the violation of their rights under the European Convention on Human Rights

1950 Protocol 1 art.1, based on the principle of restitutio in integrum.

Appeal dismissed

For the appellant Gas and Electricity Markets Authority

One Essex Court’s Thomas Sharpe QC; One Essex Court’s Michael d’Arcy; Ofgem solicitors Michael Knight and Omolade Barker

For the respondent R

Blackstone Chambers’ Michael Fordham QC; Blackstone Chambers’ Tristan Jones; Wragge & Co’s John Cooper


Regeneron Pharmaceuticals Inc; (2) Bayer Pharma AG v Genentech Inc [2013] EWCA Civ 93. Longmore LJ; Moses LJ; Kitchin LJ.

21 February 2013

When considering the sufficiency of a patent, an assertion that the invention would work across the scope of the claim had to be credible. If it was possible to make such a prediction, then it could not be said that the claim was insufficient simply because the patentee had not demonstrated that the invention worked in every case; if it was not possible to make such a prediction the scope of the monopoly would exceed the technical contribution made by the patentee to the art and the claim would be insufficient.

Appeal dismissed

For the appellant in action 0933 Bayer Pharma AG

Three New Square’s Andrew Waugh QC; Three New Square’s Thomas Mitcheson; Simmons & Simmons partner Scott Parker

For the appellant in action 0931 Regeneron

8 New Square’s Mark Chacksfield; Bird & Bird partner Trevor Cook

For the respondent Genentech

8 New Square’s Michael Tappin QC; 8 New Square’s Isabel Jamal; Marks & Clerk Solicitors partner Mike Gilbert

Featured case


A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch). Peter Smith J.

1 February 2013


Use of the word ‘history’ in the television channel name ‘Discovery History’ did not infringe the trade mark ‘The History Channel’, nor did it amount to passing off. In reaching that decision the court commented on solicitors’ responsibilities when preparing witness statements pursuant to a questionnaire exercise.

Claim dismissed, counterclaim dismissed

A&E Television Networks (AETN) brought an action for trade mark infringement and passing off against Discovery Communications Europe in connection with the television channel name ‘History’. Discovery Communications Europe counterclaimed for invalidity of the trade marks.

The claimant broadcast two cable and satellite channels in the UK: ‘History’ (previously ‘The History Channel’) and ‘Military History’. It was the registered proprietor of the word mark ‘The History Channel’ and a mark comprising the word ‘history’, with a device consisting of the letter H positioned above it.

The defendant also broadcast cable and satellite channels in the UK. In November 2010 it changed the name of one of its subsidiary channels from ‘Discovery Knowledge’ to ‘Discovery History’. It was contended that the name ‘Discovery History’ had caused and would continue to cause deception among members of the public who would believe it was connected with ‘History’. Between 2002 and 2009, the claimant’s channels co-existed with channels called ‘UK History’ and ‘UKTV History’. It had complained to the relevant broadcaster at the time about its use of the word, but the complaint was rejected and the claimant did nothing further.

In the instant proceedings AETN had been given permission to conduct a questionnaire exercise to ascertain whether the name ‘Discovery History’ would be likely to cause deception. Eight witnesses obtained through the questionnaire process gave oral testimony and a further 16 signed statements were admitted in evidence. More evidence came in the form of unsigned statements served under the Civil Evidence Act 1995. The court heard further submissions after the conclusion of Interflora Inc v Marks & Spencer plc [2012].

Claim dismissed, counterclaim dismissed

AETN had failed to establish any infringement of its trade marks or passing off by the defendant by the use of the word ‘history’. The use of the word did not infringe the registered marks because of the effect of the Trade Marks Act 1994, since the word identified the characteristics of the goods – namely a channel that provided history programmes, Reddaway v Banham [1896] and Office Cleaning Services Ltd v Westminster Window and General Cleaners [1946].

AETN’s silence for seven years in relation to ‘UK History’ and ‘UKTV History’ was strong supporting evidence that the claimant did not seriously believe the use of the word ‘history’ in association with another word that was descriptive of the programmes on the channel was capable of protection.

Further, it showed that AETN could not assert it had goodwill in the word ‘history’ when other businesses used the same word.

If there was a serious belief as to confusion and damage to goodwill and trade marks, AETN would have litigated.

Had the Interflora case been available at the trial none of the questionnaire evidence would have been allowed in, as it was of no probative value when analysed. Such evidence should not be permitted to be adduced unless the person seeking to adduce it before the trial establishes that it has probative value, Interflora applied.

The inadequacies of questionnaire evidence as identified in Interflora in relation to trade marks was equally applicable to the test required to establish passing off. The evidence in the instant case was statistically insignificant and, on examination, of no use in assisting the court in deciding whether the relevant persons were or would be deceived.

Several witnesses had been cold-called after the initial interview and notes taken of what they said. Only later was it revealed to them that the questions were for litigation. Some of the witnesses expressed unwillingness to give evidence. None of them understood that a note was being made of the conversation and that AETN would serve that note as being a hearsay statement of the evidence they would give.

The instant case demonstrated the need for solicitors preparing witness statements to curb their enthusiasm in seeking to obtain the best result for their clients.

Some statements had been changed to present them in a more favourable light from AETN’s point of view without the witnesses understanding what was happening. That was unfair to the witnesses: they should not be required to justify statements when the effect of them was not understood. Further, when preparing hearsay statements it was even more incumbent on solicitors not to manufacture things to put that evidence in the best light for their clients.

Equally, it was not appropriate for a witness to have his statement taken when he did not realise this was for the purpose of giving evidence. When they objected to giving evidence it could not be appropriate for the statement that had been taken to be served up as a hearsay statement without reference to the potential witness.


Commentary: Jeremy Dickerson

Mr Justice Peter Smith’s judgment is a reminder of the weakness of descriptive brand names. Distinctive names will always attract most legal protection.

In this case A&E faced an uphill battle to prove the name ‘History’ had acquired a secondary meaning in the eyes of consumers such as to enable it to prevent its use by a third party and, ultimately, it failed to do so.

This was underlined by the judge when he awarded Discovery indemnity costs from an early stage to reflect both the “inherent weakness of [A&E’s] case from the start” and its failure to accept a drop hands offer made by Discovery at the same time as serving its defence.

Solicitors would do well to note Smith J’s comments concerning the preparation of witness statements, echoing those made in other recent cases about the input of solicitors into witness statements with a view to furthering their clients’ arguments; this is a current bugbear that just happened to be highlighted in this case.

Solicitors preparing witness statements should consider whether they are truly factual evidence written in witnesses’ own words and ensure they do not contain evidence not within the witnesses’ knowledge.

If they do not do this, statements that have been overly finessed by solicitors may be detrimental to the credibility of the witnesses when they take the stand.

Jeremy Dickerson, head of IP litigation, Burges Salmon