On 20 November 2012, the Court of Appeal ("COA") handed down its judgment concerning the admissibility of witness evidence obtained through witness gathering surveys. The COA has provided guidelines for future survey use and concluded that in trade mark infringement cases witness evidence obtained through witness gathering surveys must be of real value in order to be adduced.

Facts

Interflora brought a claim against Marks and Spencers ("M&S") alleging that M&S's purchase and subsequent use of the Google adwords "Interflora" and variants of "Interflora" amounted to trade mark infringement.

CJEU decision on adwords

The European Court of Justice ("CJEU") considered the issues arising between Interflora and M&S (C 323/09 [2011]) in the context of questions regarding the use of a competitor's trade mark in adwords.

The CJEU held that the use of a trade mark in an adword by a competitor did amount to use "in the course of trade". However, in order for that use to amount to trade mark infringement the use of that trade mark or sign must have an adverse effect on one of the functions of the trade mark.

The use of the adword would have an adverse effect on the trade mark's function of origin if it did not enable the "reasonably well-informed and reasonably observant internet user" to determine whether the goods/services originated from the trade mark owner or from a competitor.

Decision of the COA on witness evidence

The questions considered by the COA relate to whether a trade mark proprietor should be permitted to call the evidence of witnesses identified by means of a witness gathering exercise, where the proprietor does not intend to rely on the survey or questionnaire by means of which the witnesses were identified.

The COA emphasised that the "reasonably well-informed and reasonably observant internet user" identified by the CJEU was a legal construct and not a real person, and that consequently, since the judge would also be a potential buyer of the goods/services in question, the judge would be able to in most cases determine whether the "reasonably well-informed and reasonably observant internet user" would be confused.

The COA considered previous case law at length and concluded that whilst courts have allowed calling evidence from witnesses identified by means of a witness gathering exercise, that this has generally been of no value as the evidence often does no more than confirm the judge's own independent conclusions.

The outcome of this case is twofold; the first outcome, which will be of greater interest to readers, is the impact on the approach taken when determining whether the "reasonably well-informed and reasonably observant internet user" would be confused, and the second outcome is the procedural guidance set out in the judgment in relation to the production of admissible evidence in trade mark cases. An analysis of each of these outcomes is set out below:

(1) Analysis - Impact on the approach taken to determine whether the "reasonably well-informed and reasonably observant internet user" would be confused

The CJEU's decision, as referred to above, was that the use of a trade mark in an adword by a competitor would have an adverse effect on the trade mark's function of origin if it did not enable the "reasonably well-informed and reasonably observant internet user" to determine whether the goods/services originated from the trade mark owner or from a competitor.  As a result of the COA's decision, it will primarily fall upon a judge to use his own judgement in order to determine whether the "reasonably well-informed and reasonably observant internet user" would be confused.

In the past, survey evidence and witness evidence derived from surveys have been used by claimants in order to demonstrate examples of consumer confusion to judges in trade mark cases. However, this practice will be affected going forward since the COA has ruled that the "current practice, which…is to allow the evidence in unless the judge can be satisfied that it will be valueless" was the incorrect approach to be taken. Instead, the burden of proof falls upon the party seeking to rely on the evidence to demonstrate that:

  1. Such evidence would be of real value; and
  2. That the utility of the evidence justifies the costs involved in adducing the evidence.

This higher burden may well leave claimants who are refused permissions for such evidence with some practical difficulty. This will be the case where potential confusion arises in a way or manner where the claimant is unable to track the consumer's reaction without conducting surveys and gathering witness evidence, such as for example in this case.

(2) Analysis - Detailed procedural guidance for the production of evidence in trade mark cases

The COA summarised that whilst a party may not rely on witness evidence obtained from a survey which is not statistically valid and reliable, there will be some situations which may require different considerations of witness evidence, such as where:

  1. Evidence consists of spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement;
  2. Evidence from consumers is called in order to amplify the results of a reliable survey;
  3. The goods and services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge's experience;
  4. The issue is whether a registered trade mark has acquired distinctiveness; or
  5. Where the cause of action is in passing off, since the legal question to be answered is different to the test for trade mark infringement as it involves a substantial proportion of the public rather than the average consumer.

The COA provided the following guidelines:

  1. A party may conduct a true pilot survey without the court's permission, but this will be at the party's own risk as to costs;
  2. No further survey may be conducted or adduced in evidence without the court's permission; and
  3. No party may adduce evidence from respondents to any survey without the court's permission, and that permission should only be given if the court is satisfied that the evidence is likely to be of real value and if the likely utility of the evidence justifies the costs involved in adducing such evidence.

If permission is sought to carry out a survey, the applicant should provide the court with:

  1. The results of any pilot survey;
  2. Evidence that any further survey will comply with the Whitford guidelines (guidelines regarding survey conduct); and
  3. The cost of carrying out the pilot survey and the estimated cost of carrying out the further survey.

If permission is sought to call witnesses who have responded to a survey or other experiment, the applicant should:

  1. Provide the court with witness statements from the witnesses proposed to be called;
  2. Demonstrate that their evidence will be of real value in deciding the issues the court has to decide;
  3. Identify the survey or other experiment and, in the case of the administration of a questionnaire disclose how many surveys have been carried out, exactly how those surveys were conducted and the totality of the number of persons involved and their answers to all questions posed;
  4. Disclose how the proposed witnesses were selected from among the respondents to the survey; and
  5. Provide the court with the cost of carrying out the pilot survey and the estimated cost of carrying out any further work in relation to those witnesses.

The result of this case is that a trade mark proprietor cannot call the evidence of witnesses identified through a witness gathering survey, unless it can be demonstrated that such witness evidence would be of real value and that the utility of the evidence justifies the cost involved in adducting the evidence.