In the recent case of Glaxo Wellcome UK Ltd & Anr v Sandoz Ltd & Ors  EWHC 3196 (Ch), Mr Justice Birss granted the claimants' permission to adduce survey evidence in a claim for passing off.
The claimants brought proceedings for passing off against the defendants in relation to the use of the colour purple in the sale of inhalers, the defendants' inhaler being a generic version of the claimants' product. The claimants had previously issued proceedings for infringement of their registered colour trade mark, resulting in the Court of Appeal upholding the High Court decision that the trade mark was, in actual fact, invalid (see our earlier blog here). In these passing off proceedings, permission to adduce expert evidence had already been refused.
The claimants had originally gathered survey evidence to support their claim that their colour trade mark had acquired distinctiveness. A particular feature of the case is that the market for the parties' respective inhalers is specialised. The products are sold on prescription, meaning the relevant persons who could be misrepresented in a claim for passing off are doctors and pharmacists.
The claimants conducted two surveys, one in 2015 and in 2016, each time interviewing GPs and pharmacists. The interviewees were shown a blank rectangle of the relevant purple colour shade and were asked questions. The surveys were overseen by a well-known German survey expert.
The defendants argued that the surveys were artificial with limited relevance because they used a square of colour rather than one of the claimants' inhalers, taking the colour out of context and ignoring other get up. They also argued that the surveys did not actually test the issue of deception and that the quality was poor. Specifically, the evidence was inadequately documented and the questions were leading, invited speculation and contravened the Whitford Guidelines on surveys. This meant the surveys were flawed and of little value to the court.
High Court judgment
Mr Justice Birss considered the guidelines concerning the admission of survey evidence laid down in Imperial Group Plc v Philip Morris  RPC 293, Interflora v Marks and Spencer  EWCA Civ 1501, and Enterprise v Europcar  EWHC 2498.
The use of the colour purple on packaging and marketing material by the claimants meant it was sensible to conduct the survey using a square of the colour rather than the inhaler itself. There was nothing in the methodology of the surveys to view them as fatally flawed or to undermine the findings that the colour purple was readily recognised. A trial judge could be assisted by the survey's answers, although would not be bound by the findings and could make a decision on the survey results at trial.
The costs of conducting the surveys were not recoverable but allowing the evidence would still commit the parties to significant costs. However, the case itself was important and of high value, between two pharmaceutical companies and relating to the sale of a major medicinal product. Therefore, the substantial costs caused by including survey evidence were not disproportionate to a high value commercial dispute.
Consequently, the claimants' application to include the survey evidence was allowed.
In trade mark and passing off cases, it has recently become increasingly rare that the costs of adducing survey evidence will be justified by the utility of the results, particularly following the Court of Appeal's judgment in Interflora v Marks & Spencer. Having allowed such evidence to be adduced, it will be interesting to see what weight is placed on the survey results at the final trial in these proceedings.
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