High Court refuses permission to adduce survey evidence in TV dispute

In Zee Entertainment Enterprises Ltd v Zeebox Ltd ([2013] EWHC 1644 (Ch)), the High Court has refused permission to present survey evidence in a passing-off and trademark infringement case on the basis that the survey would not be of “real value” and that any value it did have would not be proportionate to the costs involved in conducting it. 

Zee Entertainment Enterprises Ltd owns a satellite and cable television channel called Zee TV which broadcasts Hindi programmes. Zee TV was first launched in India in October 1992 and has been broadcast in the United Kingdom continuously since March 1995. Zee TV has a number of channel brands that incorporate the word 'Zee' as well as a 'Z' device. Zee contends that Zee TV has been consistently popular with the United Kingdom's South Asian population since its launch.

Zeebox Ltd is a UK company that launched an app called Zeebox in November 2011. The Zeebox app has TV guide, remote control and TV show interactive live chat functionality.

In July 2012 Zee issued proceedings in the High Court against Zeebox for trademark infringement and passing off. 

Zee conducted two pilot surveys, each of approximately 60 British Asian people, which produced a number of responses that Zee sought to rely on to support its case of passing off. Zee subsequently applied to the court for permission to conduct and rely on a survey of 400 respondents.

Zee argued that in a passing-off case, rather than a trademark case, it is legitimate to only consider and survey its actual or potential customers (ie, the narrow section of the population within its goodwill) rather than the wider British public. Zee estimated the cost of a full survey to be £60,000 and emphasised the significance of the survey results in respect of its claim for passing off.

Zeebox opposed the application, relying on an expert's report to give weight to its arguments that Zee’s proposed sample was unrepresentative and that the format of the survey invited respondents to speculate. In addition, Zeebox contended the true cost of the proposed survey would likely be £150,000.

The recently promoted Mr Justice Birss refused Zee’s application.

Birss J referred to the Marks & Spencer v Interflora ([2012] EWCA Civ 1501) and Interflora Inc v Marks & Spencer [2013] EWCA Civ 319 decisions, and noted that the court should only grant permission to adduce survey evidence if it is satisfied that the evidence is likely to be of “real value” and that the value justifies the associated costs. 

Birss J considered the case to revolve around the issue of whether it was legitimate to deem British Asians as a distinct group and, if Zee could successfully argue this first point, whether the Zeebox app is confusingly similar to Zee’s branding within that group. In order to do this Birss J commented that Zee would need to primarily rely on the usual advertising and marketing spend evidence to show goodwill. He reasoned that, if that evidence was not sufficient to convince the presiding judge that there was a likelihood of misrepresentation in the British Asian public, then survey evidence was unlikely to be of further assistance in that regard.

In addition, Birss J was of the opinion that the activities of watching television and downloading apps were not obscure exercises, but rather that these were either familiar or readily explicable to a judge. As such, survey evidence was not indispensable in this case.

Ultimately, Birss J held that the survey evidence was likely to cost £150,000 and “be of some value”, but was “not satisfied that the value justifies the substantial cost of carrying it out and the increase in the length of the trial which it will inevitably cause”.

In view of the fact that misrepresentation and goodwill are essential and distinct elements of a passing-off claim, it is somewhat difficult to reconcile Birss J’s logic in respect of the fact that the primary evidence would be that of goodwill, with that of misrepresentation seemingly taking a backseat. Birss J commented that, in respect of a weaker case for passing off, his decision may have been different, since a passing-off case hanging in the balance might sometimes be saved by survey evidence. This suggests that Birss J considers Zee to have a relatively strong case for passing off, which informed his refusal of the application. This state of affairs may underpin the reasoning in this judgment.

Keo Shaw, McDermott Will & Emery UK LLP, London