High Court clarifies when it will grant permission to adduce survey evidence

United Kingdom
The (sometimes troubled) practice of adducing survey evidence in trademark and passing off proceedings has once again become the focus of a High Court decision. In A&E Television Networks LLC v Discovery Communications Europe Ltd ([2011] EWHC 1038 (Ch), April 20 2011), the High Court has given a useful judgment setting out the approach that the court will take in actions for passing off and/or trademark infringement on assessing whether to grant permission for parties to adduce survey evidence and evidence consequential to that survey.

Due to the cost and time-consuming nature of consumer surveys, and the concern that such evidence can sometimes not be particularly probative of the issues, the courts have, as a matter of practice, required leave to be sought before such evidence is adduced. Following the practice initiated by the late Pumfrey J (as he then was) in O2 v Hutchison 3G UK Ltd ([2004] EWHC 2751 (Ch)), parties seeking to rely upon such evidence will also be required to seek the direction of the court as to the scope or methodology of any proposed consumer survey.

In the case at hand, in order to make good their case on confusion, unfair advantage and likelihood of deception, the claimants sought to conduct a survey and to rely upon the results of pilot surveys that had already been carried out. The defendant objected both to the form of the questions asked and to the methodology.

In Paragraph 26 of the judgment, the High Court set out what it saw as the nature of the exercise the court was undertaking at this stage of the proceedings:

“… It is not to settle the terms of some sort of joint survey. It is not to produce a survey which the defendant finds acceptable. And it is not to rule at this stage on the force and effect of apparently subtly crafted questions, divorced from answers and on an interim hearing. The first and main task is, in my view, to give the court an opportunity to prevent a survey going forward when it can be seen at this stage, with sufficient clarity, that it will produce results which will not help, will not be relevant and/or will not be probative or sufficiently probative to make considering it worthwhile…”

On this analysis, the defendant’s attacks on the proposed survey questions failed. The court found that the attacks amounted to an “impermissible attempt to hijack or micro-manage the survey in a manner which [was] inconsistent with the purpose of allowing the court control of such evidence”. 

However, the defendant’s attack on the methodology was upheld in part. The defendant objected to the claimants’ use of trainee solicitors to carry out the survey, alleging that this would cost at least twice as much as using a market research company, and would also taint the results. The court found that using trainee solicitors would not be likely to taint the survey, but would result in it being apparently over-expensive. The claimants were thus entitled to continue to use trainee solicitors, but if they became entitled to recover the costs of the survey, this recovery was not to be more that would have been the costs of a “reasonably priced and respected market research organisation”.

The issues surrounding the pilot surveys were complicated by the fact that the claimants were seeking permission to adduce witness surveys gathered as a result of the pilot survey rather than the result of the survey itself. The court understood the application to be one for “an indication in advance that if [the claimant] serves such material it will not immediately be excluded as being valueless as stemming from a worthless or dangerous survey”. While the court declined to rule that nothing coming from the pilot survey would be worthwhile, it also declined, at this stage of the proceedings, to grant the claimants relief in relation to the witness statements, as it could not rule that unspecified evidence stemming from the pilot surveys would inevitably be admissible.

Robert Lundie Smith, McDermott Will & Emery UK LLP, London

Unlock unlimited access to all WTR content