1. Surveying the Damage: after all the shouting what’s left for surveys in IP cases? Emma Himsworth QC Alaina Newnes

2. Introduction What is a survey? What have surveys been used for in IP cases? The approach of the UK IPO/Courts to surveys - is the pain worth any gain? – The approach of the UK IPO – The traditional approach of the court – The Interflora Judgments – The post Interflora approach of the court – The post Jackson reforms approach of the court What’s left for surveys in IP cases?

3. What is a survey? "When I use a word," Humpty Dumpty said in rather a scornful tone, "it means just what I choose it to mean-- neither more nor less." "The question is," said Alice, "whether you can make words mean so many different things." "The question is," said Humpty Dumpty, "which is to be master--that's all.” (Lewis Carroll, Alice's Adventures in Wonderland and Through the Looking Glass, 1865)

4. When is a survey not a survey? When it is a “witness collection exercise”.

5. What have surveys been used for in IP cases? Confusion between the mark and sign (‘likelihood of confusion’/to demonstrate misrepresentation) A ‘link’ between the mark and sign Distinctiveness

6. Is the pain worth the gain?

7. Practice in the UK IPO Tribunal Practice Notice 2/2012 gave notice that survey evidence and expert witness evidence could only be adduced into trade mark proceedings before the IPO with the permission of the hearing officer. The TPN gives the criteria that would be applied. The direction came into effect on 16 July 2012.

8. UK IPO: details to be provided on application for permission The purpose of the survey The questions that are to be put What those interviewed are to be shown as stimulus material The nature of the population sample The types of person who will conduct the survey The instructions given to such persons The types of location where the survey will be conducted Whether it is intended that statistically based conclusions are to be drawn from the survey

9. The traditional approach of the Court to survey evidence

10. Interflora 1 Interflora Inc v. Marks & Spencer plc [2012] EWCA Civ 1501; [2013] ETMR 11

11. Summary The appeal was brought by M&S with the permission of Arnold J. The Judgment of Arnold J. in which he allowed Interflora to adduce at trial witness evidence obtained as a result of a survey. Permission to rely upon witness evidence obtained from a second survey was refused. The Court of Appeal allowed the appeal and proceeded to give general guidance in relation to survey evidence in trade mark cases.

12. Background In the proceedings an Order in the then standard form had been made specifying that ‘neither party has permission to adduce survey evidence without first having obtained the leave of the Court. Any application for such leave is to include details of any questions proposed to be used in any such survey and details of the method and procedures proposed to be adopted in relation to the conduct thereof’.

13. The surveys/witness gathering exercise in issue Interflora sought permission to adduce evidence in the form of witness statements from an unspecified number of unidentified witnesses to be selected from among the 197 respondents gathered by means of two surveys the first of which was conducted in Uxbridge on 4 February and in Bromley on 6 February 2012; and the second of which was conducted in High Wycombe on 24 and 26 March 2012. The surveys were said by Interflora to be ‘pilot surveys’. The questions used in the first survey were different from those in the second survey.

14. The Court of Appeal made clear that: Liability for trade mark infringement is to be assessed from the standpoint of the legal construct of the average consumer. Evidence of selected consumer witnesses identified by way of a survey is not inadmissible as a matter of law. It regarded it as ‘difficult to imagine’, in actions for trade mark infringement, that the evidence of selected consumers would be useful.

15. However the Court of Appeal recognised that different considerations may come into play where (paragraph [137]): The evidence is of spontaneous confusion The evidence from consumers amplifies the results of a properly conducted survey The goods or services are not of a type to be within the Judge’s experience The issue is acquired distinctiveness Where the cause of action is passing off which requires a different question to be answered

16. With regard to survey evidence the Court of Appeal held: Survey evidence may be called if it can be established that it is of real value and the costs of such evidence can be justified. That requires a proper evaluation of the evidence by the Court at the interim stage.

17. To achieve these aims the Court of Appeal indicated that the standard form of order should be redrafted to make clear that (paragraph [149]): A party may conduct a true pilot survey without permission, but at his own risk as to costs; No further survey can be conducted or adduced in evidence without the court’s permission; and No party may adduce evidence from respondents to any survey without the court’s permission

18. Where a party seeks permission to carry out a survey it must provide the Court with (paragraph [151]): 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.

19. If a party seeks permission to call witnesses who have responded to a survey or other experiment the applicant should (paragraph [152]):

20. 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 Identify the survey or other experiment and, in case of the administration of a questionnaire disclose how many surveys were carried out, exactly how those surveys were conducted and the totality of the number of persons involved and their answers to all the questions posed Disclose how the proposed witnesses were selected from among the respondents to the survey Provide the Court with details of the costs incurred and estimates for the further work required

21. Permission to appeal to the Supreme Court was refused by the Supreme Court Court (Lord Neuberger, Lord Mance and Lord Sumption) on 12 February 2013: because the application does not raise an arguable point of law of general public importance which ought to be considered by the Supreme Court at this time, bearing in mind that the case has already been the subject of judicial decision and reviewed on appeal. The only issue of law which may be appropriate for this Court would not arise on this appeal.

22. Interflora II Interflora Inc v. Marks & Spencer plc [2013] EWCA Civ 319; [2013] FSR 26 Longmore LJ; Lewison LJ and Sir Robin Jacob

23. This was the second appeal brought by M&S against the Order of Arnold J. relating to the admissibility of witness evidence obtained by way of a survey: see [2013] EWHC 273 (Ch). The Judge refused permission to appeal. Permission to appeal on the basis that the appeal raised an issue of principle was given by Kitchin LJ.

24. The survey/witness collection exercise 100,000 + individuals who had bought flowers from Interflora or who had taken part in a previous survey were identified. Each sent an electronic questionnaire 6866 persons responded By means of various screening processes the number reduced 56 people contacted and a final questionnaire administered/attempt made to administer questionnaire 13 witnesses identified who were said to be witnesses of ‘real world’ confusion

25. The Court of Appeal reiterated that evidence of this kind should not be allowed in unless the party seeking to call the evidence satisfies him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost (paragraph [26]). The Court of appeal accepted the submission that judges should be robust gatekeepers in this respect (paragraph [5]).

26. In the context of Interflora II the Court of Appeal considered the following factors in allowing the appeal: (1)The form of the questions (2)The differences between the raw answers to the questions and the witness statements that were sought to be relied upon (3)Whether the witness statement sought to be relied upon were representative or produced a skewed result (4)The timing of the work done and the application for permission (5)The burden placed on the respondent to the application

27. How Interflora I and Interflora II have been applied by the Court A number of cases have referred to or commented upon the Judgments of the Court of Appeal in Interflora I and Interflora II: Maier v Asos Plc [2012] EWHC 3456 (Ch) (Asplin J); Fage UK Ltd v Chobani UK Ltd [2013] EWHC 298 (Ch) (Hildyard J) (interim) see also [2013] EWHC 630 (final); A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch) (Peter Smith J).

28. The Jackson Reforms the final nail in the coffin for surveys?

29. CPR 1.1(1) These Rules are a new procedural code with the overriding objective of enabling the court to deal with cases justly and at proportionate cost. CPR 3.17 (1)When making any case management decision, the court will have regard to any available budgets of the parties and will take into account the costs involved in each procedural step. (2)Paragraph (1) applies whether or not the Court has made a costs management order.

30. Interflora II, per Lewison LJ at [30]: “As is well known, the growing cost of civil litigation has caused extensive changes to the civil procedure rules, which are due to come into force on 1st April 2013. Among the most significant changes is the recasting of the overriding objective so that it now becomes dealing with cases justly and at proportionate cost. It will make it all the more important for judges to exercise their power to limit or exclude technically admissible evidence which is not of real value.”

31. The fate of survey evidence post Interflora and under the Jackson regime

32. An overview Okotoks Limited v Fine & Country Limited [2013] EWCA Civ 672; BSkyB Group Plc v Microsoft Corporation [2013] EWHC 1826 (Ch); Zee Entertainment Enterprises Limited v Zeebox Limited [2013] EWHC 1644 (Ch); Cosmetic Warriors Limited v Amazon.co.uk Limited [2013] EWHC 2470 (Ch); Maier v ASOS Plc [2013] EWHC 2831 (Ch); J W Spear & Sons v Zynga Inc [2013] EWHC 3348 (Ch).

33. Zee Entertainment Enterprises Limited v Zeebox Limited [2013] EWHC 1644 (Ch) (appeal pending) An application by the Claimants for permission to adduce survey evidence in relation to the passing off aspect of this claim. Two pilot surveys had been conducted. The Court (Birss J) did not grant permission.

34. Zee Entertainment Enterprises Limited v Zeebox Limited [2013] EWHC 1644 (Ch) (appeal pending) “… in my judgment if the evidence the claimant is going to call anyway is not sufficient to persuade the trial judge in the claimant’s favour than I doubt this survey will help. If I thought the passing off was weak then things might be different… But, in my judgment, in this case the results of a full survey based on this pilot may be confirmatory of a conclusion the judge has reached on the evidence already, but I think the survey is not likely to be of real value. It will be of some value, but I am not satisfied the value justifies the substantial cost of carrying it out and the increase in the length of the trial which it will inevitably cause” (at para [54]).

35. Cosmetic Warriors Limited v Amazon.co.uk Limited [2013] EWHC 2470 (Ch) The “Lush” case. The Claimants sought permission to adduce the results of a survey. The substantive claim concerned trade mark infringement and the survey was designed to identify “confusion”. Two pilot surveys had been conducted.

36. Cosmetic Warriors Limited v Amazon.co.uk Limited [2013] EWHC 2470 (Ch) The Court (Mr J Martin QC) did not grant permission. The Court noted the “average consumer” in trade mark law is an artificial construct and in normal circumstances survey evidence will not assist the court to determine how the average consumer would react when presented with the circumstances said to constitute the trade mark infringement. The Court suggested the test may be more liberal in relation to passing off actions (at para [38]).

37. J W Spear & Sons v Zynga Inc [2013] EWHC 3348 (Ch) Trade mark infringement and passing off claim. Permission for two surveys had been granted at an earlier hearing. None of the participants in the surveys was called to give evidence. The Court (Peter Smith J) was highly critical of the surveys.

38. J W Spear & Sons v Zynga Inc [2013] EWHC 3348 (Ch) Peter Smith J considered that had the application to allow the survey evidence been heard prior to Interflora II the evidence would not have survived Lewison LJ’s test (at para [81]). “… the best way for evidence to be tested is for the witness to give live evidence and be cross-examined on that live evidence” (at para [79]).

39. J W Spear & Sons v Zynga Inc [2013] EWHC 3348 (Ch) The reasons given by the expert responsible for the designing the surveys, in particular: the reasons for the structuring of the surveys; the questions to be posed; and the analysis of the evidence of the answers as written down by the interviewers, were “comprehensively destroyed … in cross- examination” (para [81]).

40. And one final quote… “The Interflora litigation has, I think it is fair to say, made it clear that the pre-existing practice in relation to surveys, where there was a tendency to allow the survey to go into the trial and let the trial judge make of it what he would, has now got to change.” Cosmetic Warriors Limited v Amazon.co.uk Limited [2013] EWHC 2470 (Ch) per Mr J Martin QC at para [19]

41. What’s left for surveys in IP Cases?

42. We leave you with a final thought Polls? Nah... they’re for strippers and cross country skiers (Sarah Palin: 3.9.2011)

43. Emma Himsworth QC Alaina Newnes One Essex Court