Surveys in UK Trade Mark Litigation - back from the dead?

In the last 12 months or so the UK Courts have given a strong suggestion that survey evidence would not be allowed in most cases – particularly in trade mark infringement claims where the goods or services in question were ones which did not have a specialist nature (the judge being able to make his own mind up). A recent case of 22 July 2014 in the High Court reopens the question by allowing survey evidence proposed to be used to show that the claimant’s mark has acquired “enhanced distinctiveness” and is identified with the goodwill of the business so as to support a claim to passing-off against the defendants Europcar. The judge in this case allowed in the evidence stating that although such evidence may not always be permitted to be used in infringement cases (when a survey is effectively an attempt to usurp the view of the judge), in a case where distinctiveness or passing-off is concerned evidence may be helpful in guiding the judge as to the position.

The following can also be taken from the judge’s comments:

1. It is necessary to show that a survey would be of real value. This is considered at the “gatekeeper” stage before trial when the party wants leave to introduce it and the judge does not have the benefit of seeing all the other evidence, and so it is difficult to establish what it brings beyond the other evidence and the value must be assessed in the abstract;

2. Where a judge might otherwise be forced into an anachronistic decision on distinctiveness, a survey may assist;

3. Where the survey contains questions which invite speculation, that may not rule out the survey (the judge noting that the questions need to be looked at, but that most surveys can be criticised for either leading (by including context) or inviting speculation (on the basis that the context was missing). He also noted that some judges might prefer a more context rich set of questions than those in the case;

4. Even if the survey is admissible in that it is of real value and is valid, a cost/benefit exercise is required – this exercise may be tainted by the costs of the “gatekeeper” exercise;

5. In considering whether to allow it in, the complexity of the case (including how long the trial is listed for) is a consideration;

6. The lack of a “control” survey to analyse the results against is not problematic. In relation to the fourth point, it is worth noting that Enterprise had spent £106,000 bringing the application to introduce the survey (including having an expert witness to deal with the validity of the questions) whilst Europcar (the defendant) had spent £109,000 resisting its introduction (including having its own expert witness criticise the survey).

Enterprise believed the costs in conducting the survey would be £116,000 whilst Europcar believed its costs in dealing with the survey would be £99,000. In other words Europcar had spent more in resisting the introduction of the survey than it would have simply dealing with the results. This led the judge to conclude that Europcar could not legitimately say that the cost of dealing with the survey – the primary concern of the court –was really an issue for it.

It is also worth noting that this is a question about admissibility of the survey. Whilst the judge may allow it in blind to the weight of other evidence the claimant holds, that is not to say that the claimant will recover all (or any of the costs of the survey if it succeeds). If it emerges that the claimant had (and knew it had) strong evidence of other sorts meaning that the survey did not in fact add much then there may be a consequence in how much it can finally recover in costs. The decision seems to be a welcome step back towards the introduction of surveys, albeit not the large scale witness gathering exercises of old. A survey needs to be a directed tool aimed at assisting the judge on a question of fact and not an attempt to usurp the judge’s role. If a survey is required then there is really a massive cost, namely the cost of a pilot survey (to demonstrate the potential for the survey and incurred before the application is made to conduct a survey and introduce the results), the cost of applying for leave from the court to conduct the full survey and introduce the results and then (and only then) the cost of the final survey. In the present case the cost is approximately 25% of the budget of each of the parties (a collective estimated cost of £431,000 from a total bill of £1.8M).

If you have any questions concerning the above case, please get in touch with your usual contact at Swindell & Pearson Ltd or [email protected]