The test to determine whether parties should be allowed to rely on survey evidence or witness collection in trade mark and passing-off litigation has been altered recently following two judgements by the Court of Appeal of England and Wales.

Litigation between Interflora and Marks and Spencer has been on-going for many years. Marks and Spencer purchased a number of Google AdWords relating to INTERFLORA so that Google searches for “Interflora” or other similar terms would trigger an advert for M&S flowers. Interflora sued for trade mark infringement. Questions were raised during the course of the litigation about the extent and nature of evidence that a trade mark proprietor, such as Interflora, should be allowed to rely upon.

On 12 November 2012 the Court of Appeal issued a judgement, following which the use of survey evidence in trade mark infringement cases is likely to become more limited. The previous practice of the courts in the UK was to allow survey evidence unless the judge was satisfied that it would be valueless. However this position has been reversed by Interflora and the trade mark proprietor must now prove that there is real value to such evidence before it can be allowed by the judge, and that the value is justified in terms of costs. The new position was further clarified in an even more recent decision, referred to as Interflora II.

As a result of these two Interflora decisions, a party may conduct a pilot survey without the permission of the court, although this is at their own risk in terms of costs. However, from that point onwards, permission must always be sought before carrying out any additional surveys or attempting to rely on any evidence obtained from people responding to a pilot survey.

If a party wishes to conduct further surveys, it must present the court with the results of the pilot survey and the cost incurred, as well as evidence that an additional survey would comply with the guidelines previously laid down, known as “the Whitford Guidelines”. The party must also provide an estimation of the costs involved in carrying out a further survey. The court can then make an informed decision as to whether an additional survey is likely to be of real value and justifiable in terms of costs. These new criteria mean that further surveys are only likely to be allowed in special or unusual trade mark infringement cases, rather than on a regular basis.

If a party wishes to call witnesses from people who have responded to a survey or questionnaire, it must provide witness statements from the witnesses they wish to call, demonstrate that there will be real value in calling them, and explain how the proposed witnesses were selected from all of those who responded to the survey. Importantly, the party must provide detailed information about its pilot survey. It must identify the nature of the survey or questionnaire and disclose how many surveys it has carried out, the number of people involved and the answers given to all the questions asked. It must also provide the court with the costs of carrying out the pilot survey and an estimate of the costs involved in further work relating to the calling of witness(es). This will enable the courts to decide whether the value of further evidence will justify the costs involved.

In summary, the onus is now very much on the party applying for permission to conduct a survey or to call witnesses to prove that there is real value to the evidence it wishes to present. The party concerned should take greater care when carrying out pilot surveys and designing further surveys, as the content and merit of such surveys is likely to be closely analysed by the courts.

With regards to a party seeking permission to call witnesses who have responded to surveys, it appears that the party’s willingness to waive privilege in respect of the selection, interviewing and preparation of witness statements for the proposed witnesses may effect whether permission is granted. If privilege is not waived, it would be very difficult for other parties to challenge the evidence presented and, as such, the value of the evidence is likely to be reduced.