Interflora v M&S: admissibility of survey evidence

Background

We previously reported on the background to the Interflora v M&S case in 2011 in which the High Court referred a number of questions to the ECJ concerning a trade mark infringement dispute. As mentioned previously, the ECJ said that the trade mark owner is entitled to prevent a competitor from advertising goods or services identical of those for which that mark is registered where that use is liable to have an adverse effect on one of the functions of the trade mark.

Following on from the ECJ decision, in the hearing before the High Court, Interflora conducted two surveys which involved the survey respondents conducting specific key word searches on a search engine and completing questionnaires. Interflora applied for permission to adduce witness evidence relating to the two pilot surveys. The High Court ruled that evidence obtained from witnesses by virtue of the fact that they have been respondents to a survey was admissible and might be probative, even though the survey itself could not be relied upon and the questions posed in the survey were flawed. M&S appealed the decision.

Court of Appeal decision

The Court of Appeal largely overturned the High Court’s decision and held that evidence obtained for Interflora from witnesses who were survey respondents was not admissible.
The appeal involved a point of principle which had not been argued before, namely: should a trade mark owner be allowed to call the evidence of witnesses identified by means of a witness gathering exercise, when the owner did not intend to rely on the survey or questionnaire by means of which the witnesses were identified?

The Court of Appeal held that although the courts had previously allowed such witness evidence, it had generally been of little or no value. Unless the court could be confident that the evidence of the selective witnesses could stand proxy for the legal construct for whose perception the legal question was to be answered, it simply represented the evidence of those individuals. There may however be cases in which such evidence might be of real use, but such cases were difficult to imagine.

Furthermore the Court of Appeal held that it did not follow that if evidence was admissible, the court had to admit it. Rather if evidence was technically admissible, it should be evaluated to see whether it would be of real utility and whether the likely utility justified the costs. In this case Interflora had not demonstrated that the evidence would be of real value as it had started with an unreliable dataset, from which it proposed to select the witnesses most favourable to itself.
What of future applications to admit survey evidence?

Such applications should be made as soon as possible. The Court of Appeal has helpfully ruled that the standard form of order in such cases should make clear that:

(i) A party may conduct a true pilot survey without permission, but at its own risk as to costs;
(ii) No further survey may be conducted or adduced in evidence without the court’s permission; and
(iii) No party may adduce evidence from respondents to any survey without the court’s permission.

Comment

This judgment, on its face, corresponds with the UK IPO’s practice notice in which survey evidence can only be adduced into trade mark proceedings before the IPO with the permission of the hearing officer and subject to the fulfilment of various criteria. The Courts, particularly, have historically been sceptical on the use of survey evidence in trade mark cases and this case highlights the fact that survey evidence is likely to be further limited to cases where they are likely to be of real value.

If you would like to speak to us regarding this matter or any intellectual property issue please contact Simon Miles on 020 7691 4054 or simon.miles@edwincoe.com.

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