Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases
Marks & Spencer plc v (1) Interflora Inc & Anor  EWCA Civ 1501
The Court of Appeal has provided important guidance that will continue the trend of restricting the use of surveys and evidence from witnesses who responded to surveys in trade mark infringement cases. This should simplify the way that cases need to be prepared, significantly reducing the costs of trade mark enforcement.
The dispute arose in the well-known litigation between Marks & Spencer ("M&S") and Interflora regarding the purchase by M&S of the INTERFLORA trade mark as a Google AdWords keyword. This resulted in the M&S "sponsored link" advertisement appearing whenever a user searched in Google for "Interflora".
In our previous publication "Who will come up smelling of roses?", we reported on the decision of the Court of Justice of the European Union ("CJEU") that use of a trade mark as a keyword could be prevented if it was liable to adversely affect one of the functions of the trade mark (the essential origin function and those regarding quality, communication, investment and advertising). However, trade mark infringement would only occur if "reasonably well-informed and reasonably observant internet users" could not easily grasp the difference between the keyword advertiser and the trade mark owner.
In June this year, Arnold J gave permission for Interflora to adduce, in its trade mark infringement claim, evidence of witnesses who had responded to a survey, even though the survey itself wasn't admitted. This has become known as a "witness gathering exercise" and is designed to place before the Court evidence from "real people" who can advance an infringement claim but can also be cross-examined.
M&S appealed on the basis that evidence from individual respondents could not be probative of the issue in the case: the state of mind of the reasonably well-informed and observant internet user. M&S argued that the Court can not know whether the selected witnesses are reliable proxies and the problem is compounded where the party calling the witnesses is permitted to select those who give most support to its case.
Court of Appeal Decision
Lord Justice Lewison, in the main judgment, gives a detailed review of previous case law on the use of survey evidence and witness gathering exercises in trade mark and passing off cases. The up shot is that, whilst the Courts have previously allowed evidence from witness gathering exercises, it has generally been of little or no value and does no more than confirm the conclusion that the judge would have reached without it. Lewison LJ admitted that this sort of evidence sometimes has greater effect in passing off cases but that is because they concern a different legal question.
He confirmed the principle that, in trade mark cases, evidence from members of the public could not stand as proxy for legal constructs such as the "average consumer" or "reasonably well-informed and reasonably observant internet user". AdWords are an ordinary consumer service and therefore the judge could reach a conclusion from his own experience without evidence from consumers. Circumstances in trade mark cases where such evidence might be of real value were difficult to imagine. Examples given were where the Court wanted to know of consumer shopping habits, the spontaneous reaction of the public to an allegedly infringing sign and where the goods concerned were not supplied to ordinary consumers.
Arnold J had wrongly assumed that, because the evidence was technically admissible, it had to be allowed. He should also have considered whether the likely utility of the evidence justified the costs involved.
Guidelines for future survey evidence and witness gathering exercises
The Court provided the following guidelines for those seeking to rely on survey evidence and witness gathering exercises in the future:
- No party may adduce evidence from respondents to any survey without the Court's permission;
- A party may conduct a pilot survey (to work out the best method for carrying out a further survey) without permission but at his own cost risk. No further surveys may be conducted without the Court's permission;
- Only if the Court is satisfied that the evidence will be of real value will permission for the survey be granted. In trade mark infringement cases where the issue is one of deception in the provision of ordinary consumer goods or services, this is likely to be satisfied only in special or unusual cases;
- When seeking permission for a survey, the applicant needs to provide the Court with:
- the results of any pilot survey;
- evidence that a further survey will comply with the Court's guidelines set out in Imperial Group plc v Philip Morris Ltd  RPC 293 (the "Whitford Guidelines"). Essentially these ensure that there are no leading questions, the survey is statistically relevant and covers a relevant cross-section of the public and full disclosure is given of how the survey is conducted, the instructions given and exact answers;
- the costs of the pilot survey and estimated costs of the further survey;
- the results of any pilot survey;
- When seeking permission to call witnesses who have responded to a survey, the applicant needs: (i) to provide a witness statement, (ii) to demonstrate that the evidence will have real value; (iii) to provide details of all surveys that have been carried out; (iv) to disclose how the witness was selected from other respondents; and (v) to provide the costs of the pilot survey and the estimated costs of carrying out further work in relation to those witnesses.
Judges have, since the 1980s, become more sceptical about the value of surveys in trade mark cases so many parties started to use surveys only to identify favourable witnesses. Arnold J at first instance thought that it was wrong to put forward witnesses as representatives of the relevant public when the originating survey was not before the Court. However, he felt bound by "the considerable precedent" for Chancery judges to rely upon such evidence. The Court of Appeal has now discredited this practice in trade mark infringement cases except in exceptional circumstances where the evidence will be of real value.
This clarification should be welcomed by trade mark owners and practitioners. There is no change in what constitutes an actionable trade mark infringement. In the majority of cases, parties no longer need to embark on costly surveys or witness gathering exercises and simply need to rely on the judge to determine more issues from his own experience. This should make litigation much cheaper. However, the Court has confirmed that this sort of evidence will be accepted in exceptional cases where the parties follow the clear guidance and show that the value will justify the costs involved.
The long-awaited infringement trial is expected to be heard in April next year when the English Court will interpret the CJEU decision on AdWords.