Welcome New Members
Published: March 1, 2018
In the United Kingdom (UK), professional pollsters have been on a bad streak, having failed to predict the outcome of the 2015 general election, the 2016 European Union (EU) referendum, and the 2017 general election. The public has become skeptical of the use of surveys and opinion polls, though the media continues to commission them.
English judges in trademark and passing off cases have also, for decades, been very skeptical of survey evidence, yet litigants (usually brand owners) are still trying to put survey evidence before them, with varying degrees of success. The recent decision by the Court of Appeal in the Kit Kat case provides a good opportunity to assess the current approach of the English judiciary to survey evidence in trademark and passing off cases.
Under the European Communities Act 1972, the rulings of the Court of Justice of the European Union (the Court of Justice) are binding upon UK courts-at the moment at least (pending Brexit). It is therefore necessary to read the English authorities in light of what has been set down by the Court of Justice. There are two relevant cases worth noting with regard to surveys, decided by the Court of Justice.
In case C-210/96, Gut Springenheide GmbH (1998), the Court of Justice did not rule out that “in certain circumstances at least, a national court might decide, in accordance with its own national law, to order an expert’s opinion or commission a consumer research poll.” In further clarification, the Court of Justice noted that survey evidence should be used when the national court has “particular difficulty” without it.
Defining a Percentage
In the last few years, the German courts have been grappling with the question of whether, for example, acquired distinctiveness (akin to secondary meaning) could be demonstrated by reference to a defined percentage of respondents to a survey. Case C-217/13, Oberbank AG (Oberbank AG and Others v. Deutscher Sparkassen- und Giroverband EV (2014)), was about a trademark application for a particular shade of red, principally for use with respect to banking and financial services.
There was a rule in Germany that for a color mark to be found to have acquired distinctiveness it must be recognized by at least 70 percent of respondents to a survey. The Court of Justice decided in this case that this was incompatible with the EU Trademark Directive.
As a result, this judgment precludes anyone in the UK from arguing that a mark cannot be distinctive because it does not meet a required threshold of 70 percent recognition in a survey, and likely precludes any argument that would require any set percentile threshold to be met.
The Law of England and Wales
Some cases have attempted to differentiate between the rules permitting surveys in trademark cases as opposed to passing off cases. There has not, however, been any recent, principled distinction made, and in practice, it does not appear to make a significant difference concerning the application of surveys in either type of case.
The Importance of Permission
In litigation in England and Wales (whether in the High Court, Intellectual Property Enterprise Court, or the Court of Appeal), the losing party will pay a proportion of the winning party’s costs, generally speaking. For evidential costs, such as costs associated with expert and survey evidence, the costs will only be recoverable if the party had the prior consent of the court to gather and adduce the evidence. Since surveys are usually expensive, anyone wishing to rely on them should apply for permission to adduce them, before conducting them, to ensure the costs are recoverable.
The Whitford Guidelines
There has long been a distrust of the probative value of survey evidence in England and Wales. Before even considering the contents of the proposed survey, in Imperial Group plc v. Philip Morris Ltd Mr. Justice Whitford stated: “However satisfactory market research surveys may be in assisting commercial organisations as to how they can best conduct their business, they are by and large, as experience in other cases has indicated, an unsatisfactory way of trying to establish questions of fact which are likely to be matters of dispute.”  RPC 293.
While not outright forbidding the use of survey evidence, Mr. Justice Whitford set stringent criteria on surveys which would be admitted, for example, that not only must the questions not be leading, they must also not direct the respondent to speculate in a way he or she would not otherwise have done (see box for summary of the Whitford Guidelines).
The Whitford Guidelines
(As summarized by the Court of Appeal):
- If a survey is to have any validity at all, the way in which the interviewees are selected must be established as being done by a method such that a relevant cross-section of the public is interviewed;
- Any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis;
- The party relying on the survey must give the fullest possible disclosure of exactly how many surveys it has carried out, exactly how those surveys were conducted, and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents;
- The questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
- Exact answers and not some sort of abbreviation or digest of the exact answer must be recorded;
- The totality of all answers given to all surveys should be disclosed; and
- The instructions given to interviewers must also be disclosed.
The Role of Witnesses
By 2000, it was generally accepted that designing a Whitford-compliant survey was nearly impossible. As a result, parties instead sought to use surveys as witness gathering exercises, relying on submitting statements of survey respondents. Unsurprisingly, parties would only call witnesses they knew to be favorable to their case. As a result, the witness testimony called could not be said to be a neutral representative of the public at large.
The Court of Appeal confronted this problem in Bach and Bach Flower Remedies Trade Marks, dismissing the appeal by the owner of the trademarks BACH and BACH FLOWER REMEDIES against the High Court decision that the marks were invalid on the basis they were generic and had not acquired a distinctive character.  RPC 513. On the point of evidence, the court considered that the practice of “repetitious evidence from individuals put forward” by either party as representing the average consumer should be limited. Rather, a court should only admit evidence for the purpose of informing itself “of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know” and it was for the court to determine the answer on the evidence, and not the witnesses themselves, and that the utility of live witness evidence was very limited.
1. Specsavers: In Specsavers International Healthcare Ltd and Others v Asda Stores Ltd, Specsavers had conducted a pilot survey without court approval.  EWCA Civ 24. Slightly unusually, the parties agreed between themselves that the pilot survey should be admitted, provided that Asda would have the opportunity to argue that the survey was of poor quality and not probative in relation to the issues.
On the facts, the first instance judge agreed with Asda that the survey in question was deficient, given that the Whitford Guidelines were still important in assessing the substance of the survey, and thus little weight was attached to it. The Court of Appeal approved the findings of the lower court (in Specsavers International Healthcare Ltd v Asda Stores Ltd  EWHC 2035 (Ch)).
2. Interflora: Procedural Requirements Set Out: Soon after Specsavers, the Court of Appeal heard Marks & Spencer Plc v Interflora Inc and Another (Interflora (I)), which was a case involving Internet keywords.  EWCA Civ 1501. Marks & Spencer had bought the word “Interflora” as a Google AdWord so that Marks & Spencer appeared top in the sponsored search results whenever a user searched via Google for “Interflora.” Interflora owned the registered trademark for INTERFLORA, and it sued for trademark infringement.
As in Bach, Interflora sought to use surveys as a witness collection exercise. The judge in the lower court ( EWHC 1722 (Ch)) agreed to allow some live witnesses from the first pilot survey.
Following the Court of Justice’s statement in Gut Springenheide, the Court of Appeal then assessed whether, in this case, the court would have “particular difficulty” in making the relevant assessments in the absence of survey evidence. It decided that the judge would be sufficiently familiar with online searches to “make up his or her own mind,” and therefore there was no need for the extra evidence.
The Court of Appeal thought that the judge at first instance had not sufficiently weighed the cost of the survey. Since the judge had sufficient common sense and life experience regarding the subject matter-here, Google searches-the Court of Appeal ruled that the judge should have viewed the survey as expensive and serving no practical purpose, and should therefore not have admitted it.
While Mr. Justice Whitford had set out the substantive guidance for surveys in Imperial Group, the Court of Appeal in Interflora (I) set out the procedural requirements for an application to admit survey evidence:
- The results of any pilot survey done at the applicant’s cost must be supplied to the court;
- Evidence must be brought to show that the Whitford Guidelines will be complied with when the full survey is completed; and
- Cost estimates must be provided of any further pilot survey and of the full survey.
If evidence from witnesses who have been identified from the survey participants is sought to be adduced, the court must be provided with:
- Witness statements from them;
- A demonstration that their evidence will be of real value to the court;
- Identification of any underlying survey, and information about how it was conducted;
- Disclosure of how these witnesses were chosen; and
- Estimates of the costs associated with these witnesses giving evidence.
The Interflora case came back before the Court of Appeal in 2013 (Interflora v. Marks & Spencer  EWCA Civ 319) (Interflora (II)). Interflora now sought to admit witness statements from people as evidence of real-life confusion (rather than confusion demonstrated by an artificial survey). The appeals court amplified what it had held in Interflora (I): “With the benefit of hindsight, perhaps I did not make my message clear enough in Interflora I. Let me say it again, but more loudly. A judge should not let in evidence of this kind unless the party seeking to call that 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.”
If there was any doubt in Interflora I that this was a high standard, it should be dispelled.
3. Zee TV’s Request Switched Off: The question of survey evidence arose again in Zee Entertainment Enterprises Limited and Others v. Zeebox Limited  EWHC 1644 (Ch). Zee TV is an India-based Hindi-language TV Channel; Zeebox is a TV app. Zee TV sought to introduce evidence of confusion, having conducted two pilot surveys among British Asian people.
The lower court judge did not grant permission to introduce the survey evidence. He found that its cost was disproportionately high, and took a view that if the other evidence Zee TV was going to put in to support its case was not strong enough for Zee TV to win, the survey was unlikely to make the required difference.
The Court of Appeal disagreed with the lower court’s reasoning on the grounds that the lower court may have been considering the merits of the case impermissibly. With regard to exercising the judge’s discretion, the Court of Appeal came to the same conclusion, however, finding the proposed survey was flawed on Whitford Guidelines grounds, and the survey was not admitted.
4. Kit Kat Foiled: Nestlé had applied for a 3D trademark for the shape of its four-fingered Kit Kat chocolate biscuit in the UK. As sold, the wrapper and each of the fingers bear the word mark KIT KAT, but the UK trademark application here was for the unembossed shape of the four-finger product. Cadbury successfully opposed the application and in 2016 Nestlé appealed to the English High Court.
As a matter of law, the English High Court determined (after a reference to the Court of Justice) that, in order to prove its case for acquired distinctiveness of the mark, Nestlé
needed to show that the relevant class of persons “would rely upon [this mark] as denoting the origin of the goods.”
Survey evidence had been introduced by Nestlé, in which 473 people were shown the unembossed shape of the four-finger chocolate biscuit and were asked non-leading questions, albeit designed to prompt them to name a commercial origin. Ninety percent mentioned the words “Kit Kat.”
The Intellectual Property Office hearing officer had rejected this evidence. On appeal, the High Court agreed that this evidence was insufficient, finding that the mere naming of “Kit Kat” did not mean that the consumers had “relied upon” the shape mark to indicate the origin of the product. Accordingly, the trademark registration refusal was affirmed.
Look For Alternatives
The Kit Kat case shows that even when a party manages to have survey evidence admitted-complying with the Whitford Guidelines and Interflora Guidelines-the survey may still not be held to be probative or admissible evidence in relation to the issues in suit. Brand owners should therefore give careful thought to whether there is any evidence, other than survey evidence, which might help support their case. Notwithstanding these obstacles, given the ever-present challenge of providing evidence to support trademark infringement and passing off actions, litigants often appear to be left with little alternative but to place reliance on some kind of survey evidence. Accordingly, it seems inevitable that there will continue to be more opportunities for the English judiciary to pass comment on the use of surveys and at the moment the likelihood that such comments will be supportive appears slim.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2018 International Trademark Association
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