Historically, trade mark surveys have had something of a bad press. Judges have been quick to criticise the quality of survey evidence, frequently due to the leading nature of questions being asked, or the poor quality of the methodology used.
Alternatively, if judges do not criticise the content of the survey itself, then they are often quick to dismiss the survey results completely, on the basis that they are entirely capable of acting as the relevant consumer, and so are able to judge whether or not one trade mark is confusingly similar to another.
The recent case of Marks and Spencer plc v Interflora Inc & Anor  EWCA Civ 1501 confirms these two points of view, but additionally raises the question of whether data underlying a survey should be available to the Court, even if the data would normally be protected under litigation privilege.
In this case, the question to be answered was whether a trade mark proprietor should be allowed to call the evidence of witnesses identified by means of a witness gathering exercise (in the form of a survey), where the proprietor did not intend to rely on the survey or questionnaire which had originally been used to identify those witnesses. The underlying data in question was therefore the survey questionnaire, so that it would be possible to ensure that no underhand methods had been used in selecting potential witnesses.
Should Judges Be Making Decisions?
In the current case, the Court of Appeal, and in particular Lewison LJ, appeared to be of the view that judges should be making decisions as to whether one trade mark is confusingly similar to another, rather than participants in surveys.
This view has a solid history. In the judgment, Lewison LJ referred to various cases which confirmed that the ultimate issue of confusion was one for the judge, rather than for witnesses, and also that the judge is able to reach a conclusion without evidence from consumers. The case law referred to by the Court of Appeal in this matter was the same, whether it came from the UK or European courts. It is, however, important to remember that surveys will still be acceptable, provided that they offer some illumination on a question of fact where a Court has "particular difficulty" in assessing misleading nature (perhaps where the industry concerned is particularly specialised), and that consumer research polls may be relied on provided that they are statistically reliable and well conducted.
Surveys as Witness Collection Exercises
The best evidence of confusion in a trade mark infringement case is, clearly, evidence of actual confusion which has been brought to the attention of the trade mark proprietor by members of the public. This, however, is very rare, and so trade mark proprietors, on becoming aware of the launch of a product bearing a potentially infringing trade mark, will often try to collect evidence of confusion by means of a survey. However, as judges have become more suspicious of the means by which such evidence of "confusion" is collected, they have become less likely to accept it. This is particularly the case due to the developing practice of using surveys not as evidence in their own right, but rather as a means of identifying "helpful" witnesses who could then be called to trial. Due to the high level of suspicion with which these types of surveys are regarded, courts will now usually require a party to submit its proposed questions for approval by the Court, prior to undertaking the survey. The Court of Appeal in the current case praised the cautious way in which previous judges had approached the value of evidence collected through surveys, and it is clear that the Court believes that the cautious approach should be continued. Lewison LJ, who wrote the judgment, was somewhat unconvinced that the views of witnesses who have been identified through a statistically potentially insignificant survey could be said to represent the views of the average consumer in trade mark infringement cases and a proportion of the average consumer in passing off cases. This point is, we believe, valid. Take the example of a survey being carried out of two hundred and fifty people, of which one hundred state that they find two trade marks to be confusingly similar to each other. If ten of those hundred agree to provide witness statements to confirm that they found the trade marks to be confusingly similar, how can those ten people be said to represent the views even of the two hundred and fifty individuals surveyed, let alone the population as a whole?
Further, and in addition to the statistically skewed use of survey participants as witnesses of confusion, the fact that the "confusion" has been fabricated from the beginning means that the evidence is fabricated "under artificial conditions by applying artificial stimuli". There therefore appear to be two bases upon which the validity of survey evidence (and the resulting witness statements) could be attacked.
How to Overcome the Objections to Survey Evidence?
The Court did set out some situations in which survey evidence might be acceptable, where it relates more to the means by which goods or services may be supplied or marketed in particular commercial fields. This confirms the point made earlier, that survey evidence relating to the practices of specialised fields might be acceptable.
The Court went on to comment that there may also be circumstances in which a judge may find it useful to hear from consumers, and on that basis the Court held that witness statements gained through survey evidence should not automatically be regarded as inadmissible. However, merely because evidence is admissible, does not mean that it should be admitted. The Court held that a judge should admit evidence where he/she believes that the evidence would be valuable and the utility of the evidence justified the costs involved. When considering the "utility" of the evidence and whether it should be admitted, the Court did postulate an interesting concept, that if the party who wishes to rely on witness evidence gathered from a survey is willing to waive privilege in all the documentation relating to the selection, interviewing and preparation of the witness statements, then this may assist the Court in weighing the probative value of the evidence.
Parties now appear to have two options when considering whether to conduct a survey. The first option appears to be simple – not to conduct a survey, and follow the 6 Jenkins Trade Mark Newsletter Surveys: Is There Any Point?... continued UK COURT DIARY large judicial hint given in this case, namely that in most cases, the judge will be able to come to his or her own conclusion as to whether marks are confusingly similar or not. If a party’s field of commercial activity is particularly specialised, then expert evidence of the manner in which that field operates may be helpful.
Clients should, however, be realistic about whether their own field is particularly specialised, and bear in mind that a judge may well be critical of any survey carried out in what might be regarded as a "normal" trading field. Secondly, if a party decides to proceed with survey evidence to obtain potential witnesses, that party must be prepared to disclose absolutely all of the underlying data used as the basis for the preparation of any witness statements, as to refuse to waive privilege in that documentation may result in the witness statements having lower probative value.
This then raises the question of how to proceed in the example above – should the party wishing to rely on the ten "confused" members of the public also include in the evidence bundle witness statements taken from non-confused members of the public, so as to be able to argue that the witness statements are a representative sample of the public surveyed? The average party is not, in our view, likely to be willing to pay for a full survey which then results in the majority of witnesses not making a statement in favour of that party. Perhaps then a pilot survey should be considered, to see whether the results are likely to be favourable.
These may be carried out without the court’s permission. However, the party conducting the pilot survey may not be able to recover costs for the survey if it wins the case, and will have to disclose the existence of the pilot if and when applying for permission to carry out a full survey. We broadly agree with the comments made by the Court of Appeal in this decision relating to the validity of survey evidence and resultant witness statements. However, we believe that when faced with the prospect of not recovering costs involved in conducting surveys, or potentially having to waive privilege in respect of all underlying data, a client may well decide to take the option being offered by the Court here, and not to carry out a survey at all.