Surveys and Witnesses to Show Confusion

Although surveys to prove a reputation of a particular mark are accepted and valuable, surveys aimed at showing a likelihood of confusion have never been liked by English Courts – they are seen as too imprecise and are often flawed because of leading questions or inappropriate artificial surroundings.

Ever since the Imperial Tobacco case in the 1980s, trade mark lawyers have been trying to find ways around the detailed and onerous requirements set out in that case to allow the results of such surveys to be relied upon. In the early 1990s a new practice arose – the 'witness collection programme' – whereby a variety of experiments/surveys were undertaken not with the aim of relying on them for statistical significance but to find a suitable number of witnesses who can attest to a likelihood of confusion. Sometimes the surveys had some statistical validity, but often not. At trial only the 'confused' witnesses were called, even though the majority of those who responded to the survey were not confused.

Some judges did find such evidence helpful (if only to support their own views), but others did not (especially if their judicial view was different as to the likelihood of confusion). The 'likelihood of confusion' issue is a 'jury-type' question for the judge alone to decide and evidence from third parties is only of relevance to explain the factual background as to the market and purchasing behaviour.

In Interflora v Marks & Spencer, the Court of Appeal has just given a seminal decision on surveys and witness collection programmes in particular. Whilst such programmes were not deemed inadmissible, they will only be allowed in exceptional circumstances and where the Court (during its initial review of the case well before trial) feels the evidence would be helpful and cost-effective.

In the actual case (which relates to the use of 'Google Adwords' by Marks & Spencer), the witness evidence that Interflora wished to rely upon was wanted by them to show that, as a result of Marks & Spencer's purchase of the 'Interflora' adword, 'a reasonably well-informed and observant internet user' would not appreciate that Marks & Spencer and Interflora were independent by looking at the search results on Google which brought up Marks & Spencer. This was the test set out by the Court of Justice of the European Union (CJEU).

The Court of Appeal decided that this question was one that the Court was perfectly capable of deciding for itself and so such evidence from witnesses was not essential to Interflora's case.

The Court of Appeal accepted that there may be cases where such evidence would be helpful – such as to show spontaneous reactions to a particular advertisement in issue or where the market was unusual or specialist. However, in most cases the evidence would not be helpful unless it was to supplement a statistically reliable survey or in support of a passing-off claim (where the legal issue is slightly different to a registered trade mark infringement claim as one has to show not that an 'average consumer' would be confused but that a substantial proportion of the public would). This latter test is more quantitative than qualitative, whilst the CJEU made plain in its initial decision in the Interflora v Marks & Spencer case that its test was intended to be a qualitative assessment and not a numbers game.

In passing-off cases, the fact that most consumers are not confused does not mean there is no passing-off if a substantial proportion (albeit a minority) are. The 'average consumer' or 'reasonably well-observant and reasonably well-informed internet user' are a legal construct, which a Court has to consider, once the relevant market and background facts have been evidenced.

So where are we now in trade mark cases?

• Pilot surveys can still be done (at one's own risk as to cost);
• full surveys can only be done with the Court's permission (with the methodology and questions set out in detail to all parties and approved);
• relying on individual witnesses from pilot surveys or other 'experiments' alone will be difficult (absent unusual circumstances); and
• whilst the above theoretically does not apply to passing-off cases, one can expect much greater judicial scrutiny even in these cases. Merely tacking on a passing-off case to a trade mark infringement case will not be enough.

Whilst 'witness collection programmes' are not (quite) dead, they will need some creative thinking and planning to be acceptable. Proper surveys may still be allowed but they will continue to be expensive and fraught with difficulties. The carrying out of small-scale pilot surveys is likely to continue, not with the aim of finding potential witnesses but, rather, with the aim of seeing if the expense of a full survey is justified.