Survey evidence in passing off cases suffered another blow recently when the Court of Appeal ruled against an appellant seeking to conduct a survey in ZEE TV. The Court’s ruling underscores the increasing difficulty of getting a court to admit evidence of confusion obtained through surveys. More critically, though, the decision gives valuable guidance on what will and will not be considered on an application to adduce survey evidence, and encourages brand owners to think outside the survey box when seeking to prove passing off.
Now You Zee It
In this case, the Court of Appeal aimed its pruning shears at Zee Entertainment, an Indian television and media company and broadcaster of several television stations widely viewed by members of the Indian community resident in the UK. All these stations were broadcast under the name ZEE TV, and were used in a logo form with a stylised letter “Z”.
The defendant produced an app for smartphone and other mobile communication devices designed to make television a more sociable experience. It provided online information on shows broadcast on multiple channels and the ability to chat with others online while watching shows. Its app was marketed under the name ZEEBOX, also with a stylised “Z” above it.
Zee TV sued for passing off and sought permission to rely on survey evidence proving that the defendant’s activities misrepresented the defendant as being associated with Zee TV. Zee TV pointed to pilot surveys that it had conducted in Birmingham, Leicester, London and Manchester and proposed to broaden them out to encompass some 500 respondents. The defendant argued against the admission of the evidence on multiple grounds, including costs and alleged flaws in the surveys.
Now You Don't
At first instance the High Court denied permission to rely on survey evidence, citing costs and the merits of Zee TV’s case. The Court noted, in particular, that Zee TV intended to rely on other evidence as well and that the survey evidence was unlikely to be determinative. Consequently, it was unlikely to justify the costs involved in producing and responding to it, which the Court put at about £75K per side.
Zee TV appealed but, although it convinced the Court of Appeal that the judge had made an error, it failed to overturn the result.
The Court of Appeal agreed that the judge had been wrong to consider the merits of the case on the application for permission to conduct a survey. The risk implicit in such an approach was obvious, since a party denied permission to conduct a survey at pre-trial stage on the basis that its case was strong enough without one might feel justifiably aggrieved if at trial its case turned out to be borderline and it lost.
This did not take Zee TV forward, though, since it merely allowed the Court of Appeal to re-consider the question afresh. In doing so, the Court was no more welcoming of a survey than the High Court had been. The Court confirmed that the right approach was to determine whether the survey proposed would be of real value in determining the case and then, even if it would, whether it was appropriate to allow permission given the costs involved.
In applying this test, the Court of Appeal readily reached the same conclusion as the judge. The survey in question would not be of real value because it was inherently flawed. The pilot surveys demonstrated that the survey was not designed so as to reach the relevant cross-section of the public, namely Hindu speakers, since so many of the respondents did not in fact speak any languages other than English. Moreover, the questions encouraged speculation among respondents and presented the respondents with an image of the defendant’s mark out of context, without making it clear that it related to television services for multiple channels. The Court could not be sure that the responses to the survey would not have been different had full and correct information been given about the nature of the respondent’s app.
Television and apps relating to television viewing were not so esoteric as to make this a special case where the court could not reach a conclusion on misrepresentation on the basis of other evidence.
Moreover, while the Court of Appeal accepted that the High Court may have over-estimated the likely costs involved in the proposed survey evidence, those costs were still likely to be in the region of £100K overall and were therefore still significant. The Court noted that the claimants had other avenues open to them to prove their case, and considered that the cost of the survey evidence was, overall, disproportionate. Consequently, it denied Zee TV’s application and returned the case to the High Court for a decision on the merits.
Following the recent decisions in Interflora, it is not easy to persuade a court to admit survey evidence in trademark infringement cases. Although the Court of Appeal appeared to have left the door open a crack in relation to passing off cases, it now appears to be pulling that shut.
Brand owners suing a competitor for passing off should note, therefore, that it will not be easy to get a court to admit evidence of confusion obtained through a survey. It will be even harder where the case involves ordinary consumer goods or services within the experience or understanding of the judge, even if the judge must be helped by evidence on the nature of the goods or services or the average consumer of them. As noted by the Court in ZEE TV, judges are used to making allowances for relevant characteristics of the purchasing public in passing off cases, even when outside of their own personal experience.
Even where a case involves esoteric goods or services, permission to conduct a survey cannot be taken for granted. Parties may conduct a pilot at their own costs risk to demonstrate that a survey will be of real value in deciding the case, but, if the survey turns out to be flawed, permission is likely to be denied. If a pilot is conducted, therefore, it must be good: questions must not be leading, they must be asked in the appropriate context, and respondents must derive from the relevant cross-section of the public. Contrary to what might be expected, this can be more challenging where, as in this case, a claimant’s products or services appeal only to a specific segment of the community. Sifting the wheat from the chaff requires careful formulation of survey questions and the order in which they are asked.
Even where a survey is strong and of real value, however, it will not be admitted if the court considers that the costs involved for both parties will be disproportionate. Disproportionality, moreover, is not necessarily determined by the overall costs incurred in the case; the parties’ means may be relevant, too. In ZEE TV, overall costs were already in the region of £1 million, but, taking into account the fact that the defendant was a start-up with fewer financial resources than the claimant, the Court of Appeal considered that the total costs of £100K - £150K involved in the proposed survey were disproportionate overall.
The cost-benefit test is applied rigorously in the IPEC in particular, and parties in cases there are unlikely often to obtain permission to conduct surveys, which are typically expensive. The cap on recoverable costs in the IPEC also means that costly permission battles relating to survey evidence are less likely there.
Wherever a case is fought, though, brand owners should remember that evidence of confusion is not the only way to win on passing off. There may be no need to conduct a survey to remedy a lack of evidence of actual confusion, since the courts recognise that there are many good reasons why actual confusion may not come to light.
Indeed, the critical scrutiny that excludes poorly conducted or disproportionately expensive surveys is the same careful eye that evaluates misrepresentation from the standpoint of the relevant consumer, based on the information and materials provided by the parties. Educating the judge properly may therefore be a more rewarding exercise for a claimant than a survey.