Omnibus survey is not best way to establish reputation, says court

United Kingdom

In UK Channel Management Ltd v E! Entertainment Inc ([2007] EWHC 2339 (Ch) and [2007] EWHC 2813 (Ch)), the Chancery Division of the High Court has considered some procedural aspects relating to the ongoing trademark dispute between the high-profile media players behind the UKTV STYLE and THE STYLE NETWORK brands.

UK Channel Management Ltd broadcasts a home and lifestyle channel under the name UKTV Style. The defendants (E! Entertainment Inc and others) sought to launch a new channel under the name The Style Network. UK Channel is the proprietor of a community trademark for the stylized word mark UKTV STYLE. In May 2006 the defendants made an application to register a community trademark for a logo incorporating the word 'style'. The application was intended to cover broadcasting and television programming. UK Channel filed an objection and then issued proceedings alleging trademark infringement and passing off.

In October 2007 an application was brought in relation to various surveys which had been adduced in evidence. The defendants argued that these should not be admissible. UK Channel provided an 'omnibus survey' (ie, a generic survey carried out by a market research organization on behalf of numerous clients), together with two specific surveys drafted particularly for UK Channel. UK Channel contended that certain parts of the omnibus survey were necessary to give evidence of acquired distinctiveness of its mark, thereby establishing reputation and goodwill.

The court disagreed, holding that there were better ways of establishing reputation and goodwill than through an omnibus survey. It went on to say that, given that UK Channel was not the sole entity which had paid for the questions, it could not produce either the questionnaire itself or the instructions given to interviewers, nor did it possess the answers given by the interviewees. As to the remaining surveys, the court rejected the first on the grounds that the question itself ("Have you heard of this television channel?" followed by holding up a picture of the THE STYLE NETWORK logo - a logo which had already appeared on programmes broadcast in the European Union, including via UK Channel) was misleading on the basis that it presupposed that a television channel called The Style Network already existed in the United Kingdom. The court indicated that a more appropriate question may have been "do you recognize this logo?" or similar. However, the court allowed the second survey. Although the court was equally sceptical about its value, the survey appeared more balanced (with permission for the author of the survey to explain its methodology and results).

In a related matter in November 2007, UK Channel brought an application seeking to amend its particulars of claim. This was challenged by the defendants, which argued that UK Channel was in fact seeking to enlarge the scope of its action.

The court confirmed that amendments which did not fall foul of Civil Procedure Rule 3(4) generally ought to be allowed provided that they are not contrary to public interest or prejudicial to the other party. It allowed the amendments in this case on the basis that they appeared to be a natural extension to the claim at hand. In doing so, the court made it clear that it was concerned that objections had been raised in the first place. It stated that although an application to amend might be the occasion to construe additional documents, it was hardly the occasion to make findings of fact.

Mark A Lubbock and Louise Krosch, Ashurst LLP, London

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