Evidence gathered by surveys is often treated with caution. And if some of the responses given on the Family Fortunes, a long-running British game show, that hesitant approach is not misplaced (“name something you keep in the garden”. “A cat” [not amusing – Merpel]). But these idiosyncratic answers and lack of probative value in the survey results illustrate perfectly why the English judiciary remains sceptical of such evidence.
In the recent interim decision in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited  EWHC 1095 (Ch) (IPKat post here), the English Court of Appeal examined in detail the nature and role of survey evidence. It did so with a strong emphasis on the court’s duty to actively manage cases in a way which was proportionate to the costs involved pursuant to Civil Procedure Rules 1.4(1), 1.4(2)and 32.1. Lewison LJ noted that in instances where the question was whether there was a likelihood of confusion, a survey contributed little to the assessment, particularly where the goods or services were ordinary and within the judge’s own experience.
As a consequence, permission to adduce survey evidence should be given only in rare exceptions where there is particular difficulty in assessing the misleading nature of the statement or description in question. Support was found for this approach in the Court of Justice of the European Union decision in Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt—AMT für Lebensmittelüberwachung (Case C-210/96)  ECR I-4657. If a survey is justified and permission granted, a party could also do much worse than to ensure compliance with the “Whitford guidelines” set out in the seminal case Imperial Group plc & Another v. Philip Morris Limited & Another  RPC 293.
This pragmatic approach is not necessarily adopted across the world. Fortunately, it just so happened that, on the day the Interflora hearing took place, this Kat was in Florida for the International Trademark Association’s annual meeting to discuss the Courts & Tribunals Subcommittee’s report on the use of survey evidence in trade mark matters. That report is currently being finalised through the appropriate channels so keep your eyes peeled for the full version on INTA’s website in due course. You will find a neat summary of the position in England & Wales as well as summaries of the position in 26 other jurisdictions. For now, this Kat’s introduction is reproduced below. If you simply cannot wait for the final report, please feel free to get in touch.
Consumer perception lies at the heart of trade mark law, but identifying precisely what that perception might be in a form which satisfies judicial inquiry can prove elusive. Many parties turn to market surveys. By simply asking individuals what is their response to certain stimuli and recording the results, the hope is that an understanding can be gained of how a mark is perceived by consumers in the marketplace. Unfortunately however, surveys are often found by courts and tribunals to be so poorly designed and lacking in objectivity that they are given little weight and rendered useless as evidence. As a consequence, parties frequently waste significant time and money and place an unnecessary burden on the legal infrastructure.
To try and address this inefficient use of resources, members of the International Trade Mark Association’s (INTA) Courts & Tribunals Subcommittee sought details from practitioners across the world as to whether any official guidance or useful case law had been published in their jurisdiction as to how to properly conduct a survey. By understanding the best practices adopted by courts and tribunals in survey design, execution and presentation, the intention was that a framework for authoritative and universal guidance could be developed. This would allow a degree of harmonisation and prove a persuasive tool for those countries where guidance is under-developed or non-existent.
Common themes have emerged. In particular, it is clear that the approach to the design, execution and presentation of an influential trade mark survey is reasonably universal, perhaps due to its basis upon scientific principles. In an encouraging sign, there is a definite drive from the judiciary in several jurisdictions to keep costs to a minimum, for instance encouraging co-operation between the parties and the preparation of joint surveys with costs sanctions for failure to do so. The ‘Best Practices’ in this report follow the distillation of these common themes.
In general, common law jurisdictions such as England & Wales, the United States of America, Canada and Australia have substantially greater guidance available, reflecting a well-developed practice of using surveys as evidence. In other countries guidance tends to be fairly limited, if indeed there is any at all. That may change over time as local jurisprudence develops, but the issue is likely to be fertile ground for development for some time. This report has accordingly been drafted with a view to being updated periodically.
Finally, as outlined in the INTA’s resolution of 22 September 2008, ‘Adverse Inference for Failure to Conduct Likelihood of Confusion Survey’ (http://www.inta.org/Advocacy/Pages/BoardResolutions.aspx), the mere fact that a party does not produce a survey as evidence should not lead to an adverse inference about likelihood of confusion in a dispute. It is thus important to note that this report does not assert that a party MUST produce a survey; rather, it lays out guidelines addressing how, if one is produced, it can be achieved most effectively.
I wonder whether anyone is aware of a similar practice being adopted elsewhere in the EU or further afield?