Court Of Appeal Restricts The Use Of Witness Gathering Exercises In Trade Mark Infringement Cases

Marks & Spencer plc v (1) Interflora Inc & Anor [2012] EWCA Civ 1501 The Court of Appeal has provided important guidance that will continue the trend of restricting the use of surveys and evidence from witnesses who responded to surveys in trade mark infringement cases. This should simplify the way that cases need to be prepared, significantly reducing the costs of trade mark enforcement.

Background

The dispute arose in the well-known litigation between Marks & Spencer ("M&S") and Interflora regarding the purchase by M&S of the INTERFLORA trade mark as a Google AdWords keyword. This resulted in the M&S "sponsored link" advertisement appearing whenever a user searched in Google for "Interflora". In our previous publication "Who will come up smelling of roses?", we reported on the decision of the Court of Justice of the European Union ("CJEU") that use of a trade mark as a keyword could be prevented if it was liable to adversely affect one of the functions of the trade mark (the essential origin function and those regarding quality, communication, investment and advertising). However, trade mark infringement would only occur if "reasonably well-informed and reasonably observant internet users" could not easily grasp the difference between the keyword advertiser and the trade mark owner.

In June this year, Arnold J gave permission for Interflora to adduce, in its trade mark infringement claim, evidence of witnesses who had responded to a survey, even though the survey itself wasn't admitted. This has become known as a "witness gathering exercise" and is designed to place before the Court evidence from "real people" who can advance an infringement claim but can also be cross-examined. M&S appealed on the basis that evidence from individual respondents could not be probative of the issue in the case: the state of mind of the reasonably well-informed and observant internet user. M&S argued that the Court can not know whether the selected witnesses are reliable proxies and the problem is compounded where the party calling the witnesses is permitted to select those who give most support to its case.

Court of Appeal Decision

Lord Justice Lewison, in the main judgment, gives a detailed review of previous case law on the use of survey evidence and witness gathering exercises in trade mark and passing off cases. The up shot is that, whilst the Courts have previously allowed evidence from witness gathering exercises, it has generally been of little or...