Surveying the legal landscape

The Court of Appeal has handed down its much anticipated judgment on the admissibility of survey evidence in the long running trade mark dispute between Marks & Spencer and Interflora.

In allowing Marks & Spencer's appeal, the Court of Appeal held that witness evidence obtained through witness gathering surveys must be of "real value" before they 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 trade mark infringement proceedings in the High Court, which referred certain questions to the Court of Justice of the European , 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 they had obtained through their surveys. Essentially, Marks & Spencer argued that the court should not accept evidence from witnesses selected as a result of a survey, unless the survey itself was statistically reliable. They contended that even if such evidence was admissible, it would be expensive, time consuming, and ultimately of such minimal use that the court ought to exclude it under their discretionary powers. Interestingly, Interflora has so 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 also 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 upon the party seeking to rely upon survey evidence to prove that, firstly, it would be of "real value", and secondly, that it would be of "real utility" and thus justify the costs involved in adducing such evidence.

Public Confusion

In trade mark infringement cases, when demonstrating the requisite likelihood of confusion of the average consumer, the question to ask is whether or not "a reasonably well informed and reasonably observant consumer" would consider that the trade mark 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, it did explain that survey evidence is not automatically deemed inadmissible as a matter of law. Some situations require different considerations of witness evidence, for example: where evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign; where evidence from consumers is called in order to amplify the results of a reliable survey; or where 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 or should not be admitted.

Procedural Guidance

The decision also provides detailed procedural guidance. Firstly, the standard form of order at a case management conference should be re-drafted, to make clear that:

• A party may conduct a true pilot survey without permission, but at his 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.

Secondly, 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.

Thirdly, if an applicant is seeking to rely on evidence gathered via a witness collection programme, the applicant should also:

• Provide the court with witness statements from the witnesses proposed to be called;
• Demonstrate that their evidence will be of real value in deciding the issues the court has to decide;
• Identify the survey or other experiment and disclose the number of surveys carried out, how they were carried out, as well as 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 has not only ruled on the issue of admissibility of survey evidence but has also provided clear procedural guidance on seeking permission to adduce such evidence. Parties seeking to rely on survey evidence must prove that it is both of "real value" and justifies the costs involved. Parties should pay heed to this before running ahead 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 trade mark infringement cases to fall (as it is now more difficult to admit survey evidence), whilst others contend that the level of use will rise (as the Court of Appeal has effectively sanctioned 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 time and time again held that survey evidence is commonly of limited use to the court in assessing trade mark infringement, which is generally assessed on a qualitative rather than quantitative basis. There are many who see the introduction of more stringent admission requirements as a positive step forward in curtailing the use of unnecessary surveys for this very reason, coupled with the fact that the process of undertaking surveys is rarely anything other than costly and time consuming.

Written by: Thomas Cadwaladr and Jeremy Drew