Many of our readers may recall that in November of last year we commented on the guidance handed down by the Court of Appeal in Interflora Inc & Anor v Marks & Spencer plc [2012] EWCA Civ 1501, regarding how you go about proving a 'likelihood of confusion' in registered trade mark infringement cases.

In particular, the Court of Appeal commented on the use of survey evidence and witness collection/selection programmes to try to prove that an 'average consumer' of the goods/services in issue would be 'confused'.

A key point that came out of the judgment was that the Court held that evidence of purportedly confused witnesses, obtained via the artificial exercise of a witness collection/selection programme, 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. Further, whilst 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', 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 a cost/benefit analysis, may well decide not to allow such evidence to be submitted. However, 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 or survey exercise.

Subsequent to the Court of Appeal's judgment, Interflora applied to the High Court for permission to adduce evidence from 13 witnesses who, it was claimed, had been 'confused' in the real world. Permission was given, but Marks & Spencer ("M&S") appealed to the Court of Appeal, whose judgment was handed on 5 April 2013 (Interflora Inc & Anor v Marks & Spencer plc [2013] EWCA Civ 319).    

The Court of Appeal allowed the appeal and held that Interflora was not allowed to adduce the evidence in question. Even if the evidence was technically admissible, it was held to be of limited value and its value did not justify the cost. The evidence was not evidence of 'real world confusion' (i.e. 'actual' confusion, evidenced by the spontaneous reactions of members of the relevant public to the allegedly infringing sign). In particular, Interflora had attempted to elicit answers from consumers by means of artificial stimulus (i.e. by asking them a leading and speculative question). Further, the evidence did not constitute a valid representative selection of the relevant public.   

Of greater significance, the Court of Appeal took the opportunity to reaffirm the guidance it handed down last November, namely:

  • Evidence obtained via survey exercises and witness collection/selection programmes should not be allowed to be adduced unless it is likely to be of real value and that the likely value of the evidence justifies the cost;
  • You can't just cherry pick the most helpful witnesses from a witness collection/selection programme, or survey, and only submit that in evidence. Such evidence is likely to be unreliable and of little probative value, and it cannot form the basis for extrapolation on the basis of any mathematical or logical probability leading to a conclusion as to whether the hypothetical 'average consumer' of the goods/services in question is likely to be 'confused'. It is not a representative selection of the range of responses to the questions asked of the persons taking part in the witness collection/selection programme or survey. Thus, a Court should not allow this sort of evidence to be submitted into the proceedings; and
  • Surveys should not ask leading questions, which cause witnesses to speculate about issues that they have not and would not have otherwise thought about.  Also, they need to produce spontaneous reactions and answers.    

Thus, the Court of Appeal's reaffirmation of what it said last November means that we are much less likely in the future to see surveys and the results of witness collection/selection programmes allowed as evidence in registered trade mark infringement proceedings, where the Court has to decide whether the hypothetical average consumer of ordinary consumer goods/services is likely to be 'confused' by the defendant's allegedly infringing activities. Such evidence will only be allowed where the Court believes it is of real value and the evidence justifies the cost. This will no doubt reduce the cost of trade mark infringement cases and the time it takes to get them to, and heard at, trial. However, it does beg the question - in a borderline case, where you do not have any evidence of 'actual' confusion arising in the real world, how do you convince the Court that there is a 'likelihood of confusion' arising if you are not allowed to adduce evidence obtained via a survey or witness collection/selection programme?

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.

Carl Steele

Mark Lomas

Garry Mackay