Surveys are frequently invoked in trademark disputes and can lend critical support to a case for or against a likelihood of confusion. The cost of preparing such evidence can be high, though, and the English courts tend to exercise significant control over the circumstances and manner in which parties may obtain and rely on survey evidence in the proceedings.
The High Court recently reviewed this area, with a particular eye to the common practice of using junior lawyers to conduct surveys, in A & E Television Networks LLC & Anor. v Discovery Communications Europe Ltd. ( [EWHC] 1038 (Ch)). Its conclusions and their repercussions are likely to be of keen interest to brand owners and advisors contemplating enforcement of rights.
In this passing off and trademark infringement action, the claimants had conducted a number of pilot surveys before the proceedings commenced. The surveys had been carried out by trainee solicitors (who the claimants deemed more assiduous in getting the job done than a professional market survey firm) as a precursor to a larger survey.
After the action was launched, the claimants sought leave to serve witness statements from witnesses identified from responses to the pilot questionnaires and/or to serve Civil Evidence Act notices relating to such responses. They also proposed to use trainee solicitors to conduct the main survey.
The defendant objected to the admission of the pilot surveys, arguing that the responses demonstrated numerous flaws including illegible handwriting, answers which were not recorded verbatim, careless use of proper capitalisation, failure to follow instructions, and other errors. The defendant also objected to the use of trainee solicitors to conduct the main survey on the ground that they would be much more expensive than a professional market research firm.
The claimants acknowledged that the cost of using trainee solicitors to conduct the main survey would be in the region of £100,000 and that the cost of instructing a professional firm would likely be half this amount. However, they submitted that there was a risk that professional market researchers would perform a rushed job, lead respondents unacceptably or even approach people on their own databases rather than approaching them in public places.
Court Rules on Methodology
The court held that its role was not to settle the terms of a joint survey or to produce a survey which the defendant found acceptable, but rather to consider the value of the claimants' proposed main survey to the present proceedings.
Although the defendant was entitled to object to the contents or construction of the proposed survey, if the claimants wished to persevere then the real question was whether the proposed survey could be demonstrated to be flawed, misleading, insufficiently probative or disproportionate (or a combination of these).
With this in mind, the court rejected the defendant's attempts to modify the form of the survey and ruled that the survey, as drafted, could be conducted. In its view, the defendant's objections amounted effectively to an impermissible attempt to hijack or micro-manage the claimants' survey.
Turning to the defendant's objections to methodology, the court agreed that using trainee solicitors rather than a market research organisation would double the cost of conducting the survey. The claimants' fears indicated a general distrust of the techniques of market survey practitioners, which the court did not regard as generally justifiable.
Nevertheless, the court did not believe that the use of trainee solicitors would necessarily taint the survey, and the type of errors highlighted by the defendant in the pilot surveys were equally likely to arise regardless whether the survey was conducted by junior lawyers or by individual interviewers employed by a market research company.
The court noted that trainee solicitors could have a greater knowledge of the issues in the action and that there was a greater risk that they might subconsciously phrase or stress the questions in a way that could lead to biased responses. However, the court accepted the claimants' proposal to minimise this risk by using trainees with no involvement in the case.
The court held that, although it did not accept that a market research firm would be unsatisfactory in performing the claimants' survey, it would allow the survey to proceed using trainee solicitors. However, it made a cost-capping order so that the claimants would not be entitled to recover any more costs than they would have incurred had they used a reasonably priced and respected market research organisation.
Admissibility of Evidence from Pre-Action Surveys
The court rejected the defendant's argument that the pilot survey evidence should not be admitted as it had been conducted without the prior permission of the court.
It observed that where a claimant conducted a well-constructed survey in order to test the strength of a prospective infringement or passing off case, it would be wrong to exclude that survey just because prior permission had not been granted. Indeed, in the case of pre-action surveys, there would be no proceedings yet for which permission could be granted.
However, in this case, the court considered that the claimants were asking for an advance assurance that, if they served witness statements from witnesses identified through the pilot surveys, these statements would not be excluded as being of no value because they stemmed from a worthless or dangerous survey.
In this regard, the court held that although the defendant had not established that any evidence arising from the claimants' surveys would be tainted, it would be wrong to grant the relief sought by the claimants as it was not possible for the court to make a ruling that unspecified evidence would inevitably be admissible. It was not acceptable or possible to make an order in advance concerning the validity of such evidence.
It is common for brand owners to rely on survey evidence in passing off and trademark infringement cases before the English courts in order to demonstrate a likelihood of confusion as to the origin of goods or services due to identity or similarity of marks.
The established practice is to seek leave from the court before such evidence is even prepared, although as noted by the court it may be legitimate to conduct pilot surveys before proceedings are launched to test whether a claim has any prospect of success. However, all surveys, whenever conducted eventually come under careful scrutiny from the court and are open to objection by adversaries. Gaining the court's approval and fending off criticisms from opposing counsel can be a difficult and expensive exercise, but one which may ultimately prove its worth in sustaining or defending against a claim.
The court's comments on the manner in which surveys are conducted are of particular interest. The use of junior lawyers and trainees to conduct surveys, particularly pilot surveys, is fairly common, and while not expressly approving the practice the court has not disapproved it either. What is clear is that the courts will regard the cost of conducting the same survey through a reputable market research organisation as the yardstick against which to measure the reasonableness of the costs actually incurred.
Using trainees and junior lawyers may result in the incurring of unclaimable extra costs, and whether these are warranted will have to be assessed on a case by case basis. If junior lawyers are used, however, advisors should ensure that they are in no way connected with the case, in order to minimise the risk of tainting or leading witnesses.
Ultimately, survey evidence remains a minefield of potential flaws, objections and costs, and there is no guarantee that a favourable survey will shift the balance of a case. Often judges are sceptical of the value of surveys, and there is always the risk of well-conducted surveys being given short shrift by judges who regard themselves as perfectly capable of making their own minds up on whether marks are confusingly similar.
Nonetheless, for as long as surveys are capable of influencing the outcome in borderline cases, parties are likely to rely on them and to argue for their admissibility. Decisions like that in A&E give insight to those who decide to take the plunge.