M&S v Interflora: death of the witness gathering exercise

In Marks and Spencer Plc v Interflora Inc ([2012] EWCA Civ 1501, November 20 2012), the Court of Appeal has effectively killed off what was a commonplace practice of adducing favourable evidence of confusion (or lack thereof depending upon which side of the fence the party is sitting) from members of the public in trademark actions where such witnesses were selected from a wider group of survey respondents (so-called 'witness gathering exercises').

By way of background, as part of a wider action concerning the alleged infringement of two of Interflora’s trademarks through Marks & Spencer (M&S)'s use of several keywords as Google AdWords, Interflora had applied to the High Court for permission to adduce the evidence of consumers located as a result of a survey. The matter came before Arnold J. While having reservations about admitting such evidence if the underlying survey was not to be placed before the court, he granted permission in relation to the witnesses obtained from one of two surveys. Essentially, he was bound to come to this decision as:

“the present state of the law is that evidence obtained from witnesses by virtue of the fact that they have been respondents to a survey is admissible and may be probative, even though the survey itself is not and cannot be relied upon, and even though the questions posed in the survey were flawed”.

Further details of the application and judgment of Arnold J can be found here.

No doubt buoyed by Arnold J’s views on the current High Court practice, M&S applied for permission to appeal, raising the fundamental question of whether:

“a trademark proprietor should be allowed to call the evidence of witnesses identified by means of a witness gathering exercise, where the proprietor does not intend to rely on the survey or questionnaire by means of which the witnesses were identified”. 

The Appeal was heard by the Court of Appeal on November 7, with judgment being handed down on November 20. The leading judgment was given by Lord Justice Lewison.

After a detailed review of the use of such evidence alongside the usefulness of that evidence to the relevant judge’s determination of the issues, Lewison LJ found that the court’s previous allowance of such evidence had proven to generally be of little or no value. There was only one way for the judgment to head from here - and the current well-established practice was held to be wrong:

“The current practice, which Arnold J understandably followed, is to allow the evidence in unless the judge can be satisfied that it will be valueless. In my judgment, that is the wrong way round. I consider that, even if the evidence is technically admissible, the judge should not let it in unless (a) satisfied that it would be valuable and (b) that the likely utility of the evidence justifies the costs involved.

It follows, in my judgment, that the approach that I took in UK Channel Management Limited v E! Entertainment Television Inc (and followed by Mann J in A & E Television Networks LLC v Discovery Communications Europe Ltd §8 (v)) should no longer be followed.”

Following this conclusion, the Court of Appeal laid down the procedures to be followed by an applicant seeking to adduce survey or associated witness evidence. These are summarised below:

• The court must be provided with material upon which to base any decision.
  • If what is sought is permission to carry out a survey, the applicant should provide the court with:
    • the results of any pilot survey;
    • evidence that any further survey will comply with the Whitford guidelines; and
    • the cost of carrying out the pilot survey and the estimated cost of carrying out the further survey. 
  • If what is sought is permission to call witnesses who have responded to a survey or other experiment, the applicant should:
    • provide the court with witness statements from the witnesses proposed to be called;
    • demonstrate that their evidence will be of real value in deciding the issues the court has to decide;
    • identify the survey or other experiment and, in the case of the administration of a questionnaire, disclose how many surveys have been carried out, exactly how those surveys were conducted and the totality of the number of persons involved and their answers to all questions posed;
    • disclose how the proposed witnesses were selected from among the respondents to the survey; and
    • provide the court with the cost of carrying out the pilot survey and the estimated cost of carrying out any further work in relation to those witnesses.

• Any application to admit survey evidence or evidence from respondents to a survey must be made as early as possible in the case management process.
• Only if the court is satisfied that the evidence is likely to be of real value should the evidence be admitted.  Factors to take into account include reliability and the value in comparison to the cost of obtaining that evidence. Lewison LJ expressed his views as to when survey and associated witness evidence would be of value. In the case of evidence of respondents to a survey, save for in a very limited number of classes (for which see Paragraphs 136 and 137 of the judgment), Lewison LJ found it “difficult to imagine” additional scenarios when that kind of evidence would be of real use.
• The objective of any application hearing should be to come to a definitive decision, not simply to postpone the decision until trial.
• The standard form of order relating to survey evidence in trademark cases should be drafted so as to make clear that:

1. A party may conduct a true pilot survey without permission, but at his own risk as to costs;
2. No further survey may be conducted or adduced in evidence without the court's permission; and
3. No party may adduce evidence from respondents to any survey without the court's permission.

While the procedure leaves the door open for applicants to seek to adduce the traditional gathered evidence of confusion, Lewison’s views on where such evidence may be of value all but closes the door. He was not willing to rule out its use in trademark actions as a matter of law, but he came very close. In the case of the evidence that Interflora wanted to adduce, the door was firmly shut with M&S’s appeal being allowed.

One final point to note is that, due to the different legal questions being considered in trademark and passing-off actions (average consumer versus substantial proportion of the public), passing-off actions fall within one of Lewison LJ’s classes where gathered witness evidence may be of value. Where an action involves passing-off and trademark infringement, one could now envisage cases where witness evidence is admitted in relation to the passing-off issues, but not in relation to trademark infringement.

Robert Lundie-Smith, EIP, London