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Yesterday the Court of Appeal handed down some extremely useful guidance as to how you go about proving a likelihood of confusion in registered trade mark infringement cases. The case in question was Interflora Inc v Marks & Spencer plc [2012] EWCA Civ 1501.

Readers may recall that, last year, the Court of Justice handed down its judgment in this case, which concerns the thorny issue of whether or not a third party competitor, who buys a registered trade mark owner's trade mark as a keyword (in respect of Google's AdWord internet referencing service) commits registered trade mark infringement.

The reason competitors do this is so that when internet users conduct a search, using Google, for the trade mark in question, an advert for their rival product or service will be displayed, rather than one for the trade mark owner's product or service.

In the Interflora case, when people searching on Google for Interflora's flower delivery service typed in the word "INTERFLORA" they were presented with an advertisement promoting Marks & Spencer's ("M&S") rival flowery delivery service. Unsurprisingly, Interflora objected to this and issued proceedings in the English High Court and the court referred the case to the Court of Justice for guidance on the law.

The Court of Justice said that it is very important that advertisers make it clear in their adverts, which appear when a trade mark is typed into Google as a keyword, that the products/services highlighted by the adverts do not originate from the trade mark owner or an economically linked undertaking. If, on seeing the advert, a reasonably well informed and reasonably observant internet user is not sure, then this can constitute registered trade mark infringement. However, whether M&S' advert infringed was a question that the English High Court had to decide.

In light of the judgment, Interflora decided that they wanted to try to obtain and file evidence to show that when consumers saw the M&S advert it led them to think that M&S was part of the Interflora network - and, thus, that this constituted registered trade mark infringement. So, they carried out pilot surveys, as part a witness collection programme, in order to try to find consumers who were 'confused'. Once they had found people who gave helpful answers, they obtained and submitted as evidence witness statements from them. M&S objected to this, but the High Court allowed the evidence to be submitted. M&S appealed the decision to the Court of Appeal.

The particular question raised on the appeal was whether a trade mark proprietor should be allowed to call the evidence of witnesses identified by means of a witness gathering exercise/witness collection programme, when the proprietor does not intend to rely on the survey or questionnaire by means of which the witnesses were identified.

The Court of Appeal accepted M&S' arguments and refused to allow Interflora to submit the evidence they had obtained. In addition, the Court of Appeal took the opportunity to comment generally on the use of survey evidence and witness collection programmes, in registered trade mark cases, to try to prove that an 'average consumer' of the goods/services in issue would be 'confused'.

The judgment of the Court of Appeal is very long, but the key points are as follows:

  • Evidence of purportedly confused witnesses, obtained via the artificial exercise of a  witness collection programme, may be helpful in passing off cases, but is rarely needed or helpful in registered trade mark infringement proceedings involving everyday (non-specialised) goods/services. It is often of little or no value. Judges can reach their own conclusions, in the absence of such evidence, as to whether 'average consumers' (who are a pure legal construct) would be confused. They can do this by using their own common sense and experience of the world;
  • You can't cherry pick the most helpful witnesses from a flawed witness collection programme, or statistically invalid survey, and assume that the court will accept their evidence as admissible. Such evidence is likely to be unreliable and of little probative value and a court will most likely not allow it to be submitted into the proceedings as evidence;   
  • The sort of evidence that is useful for a judge to have from actual consumers is of their shopping knowledge and habits. This will better inform the judge as to how an average consumer is likely to react when faced with the defendant's allegedly infringing goods/services;
  • A statistically valid and reliable survey may assist (as may evidence from consumers called in order to amplify the results) in trying to prove that average consumers of the goods/services in question will be confused. But the cost of carrying out such a survey, and of submitting evidence from consumers called in order to amplify the results, may outweigh the benefit and evidential value of it. Thus a court, when called on to carry out the cost/benefit analysis, may well decide not to allow such evidence to be submitted; and
  • Evidence from consumers who have been confused in the real world (i.e. 'actually' confused) is very different and, indeed, may be useful and admissible evidence - but this is very different from the sort of evidence of 'purported' confusion obtained under the artificial conditions of, and by applying the sort of artificial stimuli used in, a typical witness collection programme/exercise.

In summary, the Court of Appeal's decision means that we are now less likely in the future to see surveys and the results of witness collection programmes allowed as evidence in registered trade mark infringement proceedings, where the court has to decide whether or not the average consumer of the goods/services in issue is likely to be confused by the defendant's allegedly infringing activities. This will no doubt reduce the cost of such cases and the time it takes to get them to, and heard at, trial.

If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners.
Mark Lomas
M: +44 (0)7974 244484
Carl Steele
M: +44 (0)7841 663727
Garry Mackay
M: +44 (0)7801 074241