DRIVES NEW THINKING ON SURVEY EVIDENCE
We all thought that we knew where we stood on survey evidence in the UK. Following the Interflora cases and the Zee Television case, it seemed clear that the ability of parties to rely on survey evidence would be significantly restricted in future Court proceedings. The English Courts seemed determined to act as a ìgatekeeperî to proceedings, requiring parties to obtain leave to submit pilot and full surveys.
Now the case of Enterprise Holdings Inc v Europcar Group UK Limited and Europcar International SASU  EWHC 2498 (Ch) has raised the question of whether a pre-existing survey (obtained for use in corresponding OHIM proceedings), and a pre-existing pilot survey (obtained for use in the proceedings before the Court) could be adduced as evidence, and whether a full survey, based on the pilot, could additionally be carried out and brought before the Court.
In the UK, trade mark infringement proceedings were brought by Enterprise against Europcar. Enterprise relied on a number of earlier UK trade mark and CTM registrations for a stylised letter e, see, for example, CTM registration no. 5323126. Europcar counterclaimed for revocation of two of the UK registrations on the ground that they had not been used. At the same time, Enterprise had opposed a CTM application (no.11342649, see the logo at the top of page 7) for another stylised letter e, filed by Europcar, on the basis of its earlier CTM registrations. Again, the opposition led Europcar to apply for the revocation of some of Enterpriseís CTM registrations on the basis that they had not been put to genuine use.
So why then was survey evidence needed? And should it be allowed? On the basis that this seems, from the outside, to be a straightforward infringement case, the average reader might be forgiven for thinking that the survey was intended to show consumer confusion, or the possibility of consumer confusion. As the two companies involved in the dispute are both engaged in the car hire/car rental business, one would have been forgiven for thinking, bearing in mind previous judgements of the English Court, that survey evidence would not be permitted in this case - the car hire business not being the most specialised area of commerce in the world. Further, one would have thought, a commercial area that was entirely within the judgeís sphere of personal knowledge. But no, in this case Enterprise was not seeking to adduce evidence of confusion, but rather to demonstrate that its marks enjoyed an enhanced level of distinctive character. That being the case, all the rules which seemed to have been set down by the Interflora and Zee cases seem not to have applied in the Enterprise case or, at least, were applied in a slightly different manner. The judge (Morgan J) referred to a recent CJEU case, Oberbank (C-217/13) in which it was stated that ìthe law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired through use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgmentî, and to the judgment of Lewison LJ in the Interflora 1 case in which he specifically stated that, when considering survey evidence, and its admissibility, different considerations may come into play where... the issue is whether a registered mark has acquired distinctiveness.
It is clear, therefore, that although we had all thought that survey evidence would now be far more difficult to adduce into proceedings, this is only the case where a judge is asked to consider consumer confusion, and so is able to take the place of the consumer him or herself. However, when the judge is being asked to consider whether a mark has an enhanced level of distinctive character, then he or she is far more likely to turn to or allow survey evidence to assist in reaching a decision.
So at what level will survey evidence be admitted? In the present case, Enterprise attempted to argue that the ìgatekeeperî test for determining whether survey evidence should be allowed into proceedings should be lower when considering the distinctiveness of a trade mark, rather than when considering consumer confusion. The judge dismissed this view but highlighted a further differentiation, in commenting that although the test might be the same, the result of applying the test might differ, depending on the subject matter of the survey.
In a consumer confusion case, a judge may consider him/herself easily capable of considering whether there is likely to be confusion between two trade marks both used for everyday items, whereas that same judge might not consider him/herself capable of making a decision as to enhanced distinctive character in respect of the same everyday items, as this would imply a detailed knowledge of a particular consumer area. Further, the judge commented that although a confusion survey would involve the public predicting what might happen (which he/she would be equally capable of doing), a distinctiveness survey would require evidence of what had actually happened, which the judge is unlikely to know without specialist evidence as to the facts. This latter point then also fits in with the second part of the Interflora 1 test, ie, whether the survey is likely to be of value to the proceedings.
On the above basis, and having considered some objections raised to the questions in the survey, the judge allowed all of Enterprise's requests to adduce survey evidence.
Where does this leave us on survey evidence? The judge has helpfully highlighted the fact that although the test for adducing all types of survey evidence into proceedings may be the same, the result of the test may differ depending on the subject matter of the survey. This appears to leave open the possibility of subtle differences being introduced into the way in which survey evidence is considered by the Courts. The judge in this case drew attention to the Interflora 1 case, which specifically stated that ìdifferent considerationsî relating to survey evidence could come into play in different circumstances. The test of whether a mark had acquired distinctiveness was one of these (different circumstances), as well as 'spontaneous reactions', 'amplifying evidence', 'specialist goods' or 'passing off'.
It is therefore clear that the law on the introduction of survey evidence into proceedings is far from settled. Lewison LJ, in Interflora 1, has already given us the above five additional types of case when the 'usual' rules may not apply. Added to that are the considerations of the CJEU case in Oberbank, which would additionally appear to leave the door open for further argument that survey evidence should be allowed in the door, rather than being left outside.