Introduction
Facts
Decision
Comment


Introduction

The Court of Appeal has issued its much-anticipated decision on the admissibility of survey evidence in the long-running trademark dispute between Marks & Spencer and Interflora. In allowing Marks & Spencer's appeal, the court held that witness evidence obtained through witness-gathering surveys must be of "real value" before it can be adduced in court.

Facts

Marks & Spencer purchased the word 'Interflora' and other variations as Google AdWords so that consumers searching for the term 'Interflora' would be shown a sponsored link to Marks & Spencer's flower delivery service. Interflora issued trademark infringement proceedings in the High Court, which referred certain questions to the European Court of Justice, which has in turn passed the case back to the High Court for determination of the substantive issue of liability (for further details please see "Unlocking keyword disputes?", "Interflora v Marks & Spencer: the keyword clash continues" and "ECJ judgment in Interflora: keyword advertisers beware").

During the course of the High Court proceedings, Interflora was granted permission to run pilot surveys and adduce resultant findings as evidence in court. Interflora instructed a market research company to carry out two controlled pilot surveys relating to Marks & Spencer's use of the 'Interflora' Google AdWords. Although Interflora accepted that the surveys were statistically unreliable and did not seek to rely on them, they did seek to use evidence from individual witnesses who had participated in the surveys, known as a 'witness collection programme'. The High Court held that such evidence could be admissible. Marks & Spencer appealed this decision to the Court of Appeal.

Decision

The Court of Appeal accepted Marks & Spencer's arguments that Interflora could not submit the evidence that it had obtained through its surveys. Essentially, Marks & Spencer argued that the court should accept evidence from witnesses selected as a result of a survey only if the survey itself was statistically reliable. It contended that even if such evidence was admissible, it would be expensive, time consuming and ultimately of such minimal use that the court should exclude it under its discretionary powers. Interflora has thus far not sought permission to appeal this decision to the Supreme Court, although at the time of writing the time for doing so had not yet ended.

In addition to finding in favour of Marks & Spencer, the Court of Appeal provided helpful guidance on the use of survey evidence and witness collection programmes. It held that the "current practice, which…is to allow the evidence in unless the judge can be satisfied that it will be valueless", is incorrect. The burden of proof falls on the party seeking to rely on survey evidence to prove that it would be of both "real value" and "real utility", and would thus justify the costs involved in adducing such evidence.

Public confusion
In trademark infringement cases, when demonstrating the requisite likelihood of confusion of the average consumer, the question to ask is whether a reasonably well-informed and reasonably observant consumer would consider that the trademark owner and alleged infringer are independent of one another. The Court of Appeal confirmed that, generally, this question should be answered by a qualitative assessment, rather than a quantitative assessment, and that survey evidence is commonly of little or no value, often simply confirming the conclusion that a judge would have reached anyway.

However, the court explained that survey evidence is not automatically deemed inadmissible as a matter of law. Some situations require different considerations of witness evidence, such as where:

  • evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign;
  • evidence from consumers is called in order to amplify the results of a reliable survey; or
  • the goods or services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge's experience.

Survey evidence is therefore not inherently admissible; nor is it inherently inadmissible. A court must exercise its discretion when deciding whether such evidence should be admitted.

Procedural guidance
The decision also provides detailed procedural guidance. First, the standard form of order at a case management conference should be redrafted to make clear that:

  • a party may conduct a true pilot survey without permission, but at its own risk as to costs;
  • no further survey may be conducted or adduced in evidence without the court's permission; and
  • no party may adduce evidence from respondents to any survey without the court's permission.

Second, when deciding whether to give permission to carry out a survey, an applicant should provide the court with the following:

  • the results of any pilot survey;
  • evidence that any further survey will comply with the Whitford guidelines (a set of specific guidelines for surveys); and
  • the cost of carrying out the pilot survey and the estimated cost of carrying out any further surveys.

Third, if an applicant seeks to rely on evidence gathered through a witness collection programme, the applicant should also:

  • provide the court with witness statements from the witnesses proposed to be called;
  • demonstrate that its evidence will be of real value in deciding the issues that the court has to decide;
  • identify the survey or other experiment and disclose the number of surveys carried out, how they were carried out and their answers;
  • disclose how the proposed witnesses were selected from among the respondents to the survey; and
  • provide the court with the costs of carrying out the survey, as well as the estimated cost of further work on the witnesses.

Comment

The Court of Appeal's decision not only clarifies the issue of admissibility of survey evidence, but also provides clear procedural guidance on seeking permission to adduce such evidence. Parties seeking to rely on survey evidence must prove that it both is of real value and justifies the costs involved. Parties should pay heed to this before proceeding with their intended survey.

Any party seeking to adduce survey evidence should also be aware of the procedural hurdles that must be overcome. Some believe that this decision will cause the level of use of survey evidence in trademark infringement cases to fall (as it is now more difficult to admit survey evidence), while others contend that the level of use will rise (as the Court of Appeal has effectively condoned the use of survey evidence by setting out clear requirements for its admission). Nevertheless, whether the use of survey evidence rises or falls is, to some extent, immaterial, as the courts have repeatedly held that survey evidence is commonly of limited use to the court in assessing trademark infringement, which is generally assessed on a qualitative, rather than quantitative, basis. Many see the introduction of more stringent admission requirements as a positive step forward in curtailing the use of unnecessary surveys for this reason, coupled with the fact that the process of undertaking surveys is rarely anything other than costly and time consuming.

For further information on this topic please contact Jeremy Drew or Tom Cadwaladr at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email ([email protected] or [email protected]).

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