Court of Appeal, Decision of 20 November 2012, No. [2012] EWCA CIV 1501, Interflora, Inc. v. Marks and Spencer Plc

Evidence from individual consumers identified by means of a survey will be cut right back following a ruling by the English Court of Appeal. This will lead to considerable costs savings in many actions before the English courts.

In infringement proceedings involving goods or services which are supplied to ordinary consumers and which are within the judge's own experience, evidence from witnesses obtained as a result of a survey is likely to be ruled inadmissible. But evidence of witnesses' spontaneous, real world reactions to the alleged infringement will still be allowed.

Historically, carrying out a reliable and statistically valid survey which would assist the court in evaluating the likelihood of confusion issue was fraught with difficulty, usually incurred disproportionately high costs and most were held to be flawed in some way. Still, claimants often felt anxious if at least some evidence from real consumers was not put before the court. So instead of relying on survey results, a practice developed whereby the claimant brand owner would use a survey to find members of the public whose individual reactions to the allegedly infringing sign might assist the court. This became known as "a witness collection programme". As the Court of Appeal commented,

"A cynic might think that the phrase “witness collection programme” is simply a euphemism for adducing evidence from a skewed selection of witnesses identified by means of a statistically invalid and unreliable survey."

This hinted strongly at the ultimate outcome of the appeal, which was brought by Marks and Spencer/M&S, a major UK-based retailer, against the grant of permission to allow Interflora, Inc., operator of the well-known flower delivery service, to call the evidence of witnesses identified using a witness collection programme in its action against M&S.

Interflora claimed that M&S had infringed its UK national and Community trademarks for INTERFLORA by purchasing the Google Adword "Interflora" to generate sponsored links including advertisements for M&S's own flower delivery service in Google search results for "Interflora".

Following an earlier reference to the European Court of Justice in the case[1], the legal question for the trial judge was whether the reasonably well-informed and reasonably observant internet user would or would not understand the M&S advertisements to indicate that M&S was part of the Interflora network.

Interflora sought to help answer this question by asking consumers: "What if anything do you think [the M&S sponsored link/advertisement] tells you about any relationship between Interflora and Marks and Spencer". All the responses resulting from the exercise were disclosed and by Interflora sought to call as witnesses some of those consumers whose responses were favorable to its case.

The Court of Appeal held that the evidence of those witnesses was inadmissible. Following a comprehensive review of earlier survey/witness collection cases, the court said that the evidence of this kind was generally of little or no value. This was because it often did no more than confirm the conclusion that the judge would have reached without it. Unless the judge at trial could be confident that the evidence of the selected witnesses could stand proxy for the persons or legal construct through whose perception the legal question was to be answered (in this case the reasonably well-informed and reasonably observant internet user) it would simply represent the evidence of the individual concerned.

The Court of Appeal's decision by no means rules out all consumer evidence in UK trademark infringement actions. Consumer evidence may be needed:

  • to amplify statistically reliable survey results
  • to provide "real world" evidence of confusion; i.e. spontaneous reactions of consumers to an allegedly infringing sign
  • where the goods or services are unlikely to be within judge's experience - evidence on shopping habits, the nature of market and the kinds of marketing used for them
  • on the issue of acquired distinctiveness of a mark.

Nevertheless, it is clear that members of the public will play a very limited role in infringement actions going forward. The substantial costs savings will be welcomed by all litigants.