The Court of Appeal in (1) Interflora Inc (2) Interflora British Unit v Marks & Spencer Plc [2013] EWCA Civ 319, overturned the decision of the High Court to grant Interflora permission to adduce witness evidence in support of its claim for IP infringement against Marks & Spencer.

The facts

The dispute erupted in 2008 after Marks & Spencer (M&S) bought several of Interflora’s trademark keywords and phrases in Google AdWords. This meant that searching ‘Interflora’ on Google would trigger the display of a link advertising a flower delivery service by M&S, effectively redirecting business that might otherwise have gone to Interflora to M&S.

Interflora brought a claim against M&S for IP infringement. The case reached the European Court of Justice in 2011, where it was redirected back to the High Court for a decision.

During the course of the proceedings, disputes arose in relation to the witness evidence that Interflora wished to adduce. Interflora’s solicitors had contacted potential witnesses from a pool of over 100,000 people, and asked questions according to a script. From these, Interflora managed to find 13 people who it said could give evidence of real world confusion. It was the evidence of these 13 people on which Interfora wished to rely in support of its contention that the use of words such as “M&S Flowers” in an advertisement displayed as a sponsored link following a Google search for “Interflora”, is insufficient to enable a reasonably well-informed and reasonably observant internet user to tell that the flower delivery service offered by M&S does not originate from Interflora.

The High Court granted permission to Interflora to adduce this evidence, on the basis that it was not “of little or no value”.

M&S appealed.

Held on appeal

The appeal was allowed on the grounds that the High Court Judge, Arnold J, had conducted a flawed analysis of the nature of the application and the quality of the raw data behind the evidence, and ultimately applied too lax a test as a result.

In reaching their decision, Lord Justices Lewison and Longmore and Sir Robin Jacob looked carefully at the way in which Interflora had compiled the witness evidence that it wished to adduce, as well as the quality of the evidence produced as a result. It was concluded that a judge should not normally admit evidence of this kind unless satisfied that:

  1. The evidence was likely to be of real value; and
  2. The likely value of the evidence justified the costs.

Arnold J was therefore wrong to look at whether the evidence had “little or no value”. The Court of Appeal confirmed that the question is not whether the evidence has “some” value, but whether the evidence has “real” value, a question which must be decided on the individual facts of each case.

Comment

This case should provide useful guidance to practitioners who find themselves faced with the task of identifying and selecting witnesses to support a case from a substantial pool of individuals.

As emphasised by Sir Robin Jacob, this decision in no way marks the end of survey-based evidence. However, if the survey amounts to no more than scratching around for something with very limited results, then there is every good reason, both in common sense and procedural economy, for excluding it.