Survey Evidence in Trade Mark Infringement
A & E Television Networks LLC and AETN UK v Discovery Communications Europe Ltd:  EWHC 1038 (Ch)
The claimants in this case for trade mark infringement proceedings and passing off had for years broadcast a cable and satellite channel called The History Channel, which was re-named simply 'History' in 2008. It has a subsidiary channel called 'Military History' and owned trade marks for both 'The History Channel' and 'History' as device and word marks.
The defendant is the broadcaster of the Discovery channels in the UK. One of its associated channels used to be known as Discovery Knowledge. However, on 7 October 2010, it announced that it would change the name of the channel to 'Discovery History' and started advertising it to the public on 24 October. Broadcasting under that name commenced on 7 November.
The claimants say that in doing so, the defendant is guilty of trade mark infringement and passing off and commenced an action to enforce its claims. Among the issues that arose were issues as to confusion, unfair advantage and likelihood of deception.
In order to make good its case on these points, the claimants sought permission to conduct a survey, seeking to rely on pilot surveys that had already been conducted.
It is common for parties in actions for infringement and passing off to seek to introduce survey evidence. Such evidence is invariably expensive and time consuming and quite often not particularly prohibitive or persuasive because of the manner in which it was conducted. Often the questions asked will be subject to criticisms and, as such, the courts have, as a matter of practice, required that the parties seek leave from the court before such evidence is adduced.
The practice now followed is that case management directions are given at an interim stage requiring the parties to seek directions of the court as to the scope or methodology of any proposed consumer survey that the parties might desire to put in evidence. This means that questions and methodology are settled with the agreement of the court in advance.
In this case, between 10th and 13th October 2010, the claimants had conducted six pilot surveys at six venues in London. They were intended as a precursor to a larger survey. The pilot survey was conducted by trainee solicitors from the claimant's instructed firm.
The defendant objected to the admission of the pilot surveys on the basis of the questions and personnel used to administer them' and objected to certain aspects of the proposed survey, again on the basis of the questions asked and the personnel used to conduct the survey. After consideration of the parties' arguments, the judge allowed the claimants to carry out the survey, rejecting the defendant's proposed amendments which amounted to an impermissible attempt to highjack or micromanage the survey. However, the judge did accept the defendant's criticisms that the proposed use of trainee solicitors to conduct the survey would make it overly expensive and ordered that if the claimants were entitled to recover the costs of the survey, they should not recover more than what it would have cost to use a reasonably priced and respected market research organisation.
Overall however, the judge felt that it was not appropriate to conduct a hearing on the value of the survey evidence at this interim stage and the right course of action was to allow the survey to take place and have an more informed argument at trial. The results are awaited with interest.
In the meantime, anyone embarking on a survey should have regard to the case of Imperial Group Plc & Another v Philip Morris Limited & Another  RPC 293 which indicates the way that a survey should be conducted and is still regarded as the leading authority on the matter.
This states as follows:
If a survey is to have validity (a) the interviewees must be selected so as to represent a relevant cross-section of the public, (b) the size must be statistically significant, (c) it must be conducted fairly, (d) all the surveys carried out must be disclosed including the number carried out, how they were conducted, and the totality of the persons involved, (e) the totality of the answers given must be disclosed and made available to the defendant, (f) the questions must not be leading nor should they lead the person answering into a filed of speculation he would never have embarked upon had the question not been put, (h) the exact answers and not some abbreviated form must be recorded, (i) the instructions to the interviewers as to how to carry out the survey must be disclosed and (j) where the answers are coded for compute input, the coding instructions must be disclosed.