Permission for survey granted despite application of stricter Interflora test

In Maier v ASOS plc ([2012] EWHC 3456 (Ch), November 23 2012), the Chancery Division of the High Court of England and Wales has granted permission for a witness gathering exercise and a survey to be conducted in a trademark infringement and passing-off dispute despite applying the Court of Appeal's stricter test in Interflora. 

The claimants are the owners of a Community trademark for ASSOS in Class 25 of the Nice Classification for "clothing, footwear and head gear", under which they sell a range of clothing and accessories aimed at cyclists. The claimants brought an action for infringement of this trademark and passing off against the defendants, which run an online clothing retail company under the ASOS mark. Before Mrs Justice Asplin was an application by the claimants seeking, among other things, permission to perform a witness collection exercise and a survey. The defendants had not opposed the application in this regard until the Court of Appeal handed down its judgment in Marks and Spencer plc v Interflora ([2012] EWCA 1501), which dealt at length with the issues of witness gathering and survey evidence in the context of trademark disputes. It therefore fell to Mrs Justice Asplin to determine the application in light of the Court of Appeal's guidance.  

The claimants wished to contact respondents to a competition it placed in a national newspaper under the title 'Win a Trip to Paris with Assos'. The claimants contended that some of the responses received to the competition showed spontaneous confusion between the ASSOS and ASOS marks. At this stage, the claimants only sought to contact the respondents; however, they acknowledged they would need to seek further permission to adduce witness statements resulting from the witness collection exercise. 

Prior to the decision of the Court of Appeal in Interflora, such evidence was to be allowed unless a judge was satisfied that the evidence will be valueless. In the Court of Appeal, however, Lewison LJ took the view that this approach was the wrong way round, and that the correct test to be applied was that it should not be allowed unless the judge was satisfied that:

• the evidence would be valuable; and
• the likely utility of the evidence justified the costs involved. 

An exception to this stricter test arises where the subject matter of the dispute is not one that would concern ordinary consumers or be within a judge's likely experience. It was not seriously pursued in this case that Assos' activities in the cycling sector would satisfy this.

Counsel for the defendants argued that this test applied only to trademark cases, not passing-off cases. This argument was rejected as the judge found that, although Interflora was a trademark infringement dispute, the consideration of this type of evidence was a general one. The judge considered that the witness collection exercise was valuable in relation to the issue of confusion which was raised in the pleadings and noted that the claimants would have to make a further application seeking permission to rely on witness statements produced as a result of the exercise. The judge considered the costs of the exercise to be modest in relation to the overall costs of the proceedings and accordingly granted permission for the witness collection exercise to be conducted by the claimant.  

The claimants also sought permission to conduct a survey at the London Bike Show. There was a debate as to the context in which the defendants' mark would be shown as part of the survey, which was resolved by the claimants agreeing to show the defendants’ mark in the context of one of the defendants' clothing tags. Again, the anticipated cost of the survey was modest in the context of the overall anticipated costs of the dispute. It was the court's task to consider whether the proposed survey would satisfied the guidance set out by Whitford J in Imperial Group plc v Philip Morris Ltd ([1984] RPC 293) (and repeated in the Court of Appeal in Interflora) and the Interflora test.

The judge was satisfied that the defendants' mark was to be used in the correct context and that the survey would comply with the Whitford J guidelines. The survey would be valuable for determining whether a substantial number of people would be deceived. The judge considered that the costs involved were proportionate and therefore granted permission for the survey to be conducted.  

The defendants did not originally oppose these applications until the Court of Appeal gave its judgment in Interflora. Interflora has already been raised in a number of trademark and passing-off disputes to restrict and criticise the use of survey evidence. Although successful in both applications, the claimants will no doubt be confronted by the stricter test in Interflora again when seeking to rely on the results of the witness gathering exercise and survey. The judge's approach to Interflora suggests greater scrutiny of this type of exercise in the future, at each stage in the evidential process, and in particular greater scrutiny of the proportionality of the costs occasioned in gathering and assessing the evidence for both parties. Parties to comparable disputes should therefore be mindful of the Interflora test when proceeding with similar evidence gathering exercises.  

Leigh Smith, McDermott Will & Emery UK LLP, London