But that’s what happened last year when, for
the second time, the Court of Appeal overturned a decision to
allow survey evidence in the long-running trade mark/AdWords
Marks & Spencer and Interflora.
Lord Justice Lewison – one of the IP specialists on
the Court, but not known as one of its most outspoken members
– said: "With the benefit of hindsight, perhaps I did
not make my message clear enough in Interflora I. Let me say it
again, but more loudly. A judge should not let in evidence of
this kind unless ... (a) it is likely to be of
REAL value; and (b) that the likely value of
the evidence justifies the cost."
Lewison’s emphatic language reflects the UK
courts’ general desire to cut out game-playing by
litigants and keep parties’ costs down. Both
concerns are real: it is too easy to rig surveys and the costs
can run into hundreds of thousands of pounds.
The UK approach seems to be that surveys only have a value
where they support the judge’s own evaluation.
That is perceived as being
much stricter than the view taken in many other countries.
And it creates a problem for trade mark owners trying to prove
infringement and/or passing off: namely, how do you show
confusion if not by showing that people are confused? And how
do you find witnesses who can prove there was confusion without
doing a survey?
Without the opportunity to present such evidence, the case
often hinges on the judge’s own view of the facts
– with him or her assuming the perspective of the
normal average consumer (in trade mark cases) or even
potentially speaking for a substantial proportion of the public
(in passing off cases). That could make the outcome of cases
unpredictable depending on which judge is assigned, and what
mood they happen to be in during the hearing.
Are surveys dead?
judges’ panel on trade marks organised by UCL
and MARQUES last year, the first question asked was: are
surveys dead? "Yes," said High Court judge Mr Justice Birss
(left) emphatically. As he is one of the judges most likely to
hear such cases, potential litigants might want to take
In practice, UK courts now play a gatekeeper role with
parties asking the judge at an early stage of proceedings
whether they can conduct surveys, with predictable
Assos v ASOS, the judge indicated that the caution
over surveys applies equally to passing off cases (an appeal is
due later this year), in
Fage v Chobani (the Greek yoghurt case, also under
appeal) a survey was allowed with significant reservations, but
in the judgment; in
A&E TV Networks v Discovery (regarding the History
TV channel) the judge suggested surveys should be confined to
the bin; in
BSkyB v Microsoft (the SkyDrive case) the judge had
"considerable doubts as to the probative value" of the survey;
Mattel v Zynga the judge said "surveys have no
evidential weight whatsoever".
seminar on brands at King & Wood Mallesons SJ Berwin
this week, speakers including barrister
Fiona Clark discussed the difficulties of getting surveys
accepted. Ray Black, a partner at the firm, told me the
judicial trend was a reaction to the former situation where
leading questions were tolerated in surveys, and reflected the
fact that litigation had become "outrageously expensive".
In two recent cases, Cosmetic
Warriors v Amazon and
Zee v Zeebox, judges flatly refused to allow
surveys at the gatekeeper stage. In the latter, Birss said that
a survey would be "of some value, but I am not satisfied that
the value justifies the substantial cost of carrying it out and
the increase in the length of the trial which it will
The Zee decision has been appealed, with the Court
of Appeal hearing starting today. The panel of three judges
includes – you guessed it – Lord Justice
Lewison. If the Interflora cases are a guide, the keys
on his PC may get another hammering.