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Case note on the admissibility of survey evidence in a trade mark infringement case.

Written by Paul Bicknell on 04 May 2011

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Case note on the admissibility of survey evidence in a trade mark infringement case.

Background

The claimants had commenced proceedings against the defendant for registered trade mark infringement and passing off. Due to the defendant's use of the words Discovery History. The claimants broadcast a well-known cable and satellite channel formally called the History Channel before changing their name to History. The claimants are proprietors of trade marks for "The History Channel" and "History".

The defendant is a broadcaster of in particular Discovery History a name change from "Discovery Knowledge" in October 2010.

General issue before the court

The substantive issue before Justice Mann was whether to grant certain "permissions and liberties" for the claimants to adduce and conduct a survey and to rely on pilot surveys at trial.

Law

Mr Justice Mann set out the jurisdiction and principles to be applied at paragraphs 5-14 of his judgment in summary as follows:

1. Leave (permission from the court) is required before a party may adduce survey evidence this is based on the fact that such "...evidence is expensive and time consuming and quite often not particularly probative..." see also Esure Insurance -v- Direct Line Insurance [2009] IP & T 706; Channel Management Limited -v- E! Entertainment Television [2008] FST 120.

2. It is necessary to bear in mind the following:

"So far as a party is going to seek to put expert evidence before the court, the court is exercising its power to control the amount and nature of expert evidence in order to make sure the expert evidence is proper evidence, admissible, and proportionate.

So far as a party seeks to put in the actual answers to questions, the court is ensuring the evidence is admissible and probative.

So far as the court is controlling the calling of live witnesses obtained as a result of some form of survey evidence (so-called witness collection exercises) it is again ensuring that the evidence is admissible and probative. In particular, it is acting to prevent a party seeking to call a witness whose evidence is going to be tainted to an unacceptable degree by the mechanism under which it is collected (an inappropriate question).

In so doing, the court is ensuring that costs are not wasted and are proportionate. It is wrong for costs to be wasted in conducting hopeless surveys, for the other party to have to waste costs dealing with that evidence, and for court time to be wasted in dealing with it at trial.

When a court is acting in this capacity it must bear in mind that it is acting at some remove from the trial. If it disallows a survey it is concluding, short of a trial, that evidence which one party wishes to adduce should not be allowed in because it will be of no or insufficient value. In embarking on that exercise it must acknowledge that there will be cases in which it is not wholly clear that the evidence in question will be valueless. In those circumstances the right course may be not to bar the evidence or survey at the interim stage, but to allow it and to have more informed argument at the trial (or conceivably at another interim stage, provided that that is a cost-effective way of going about the matter)".

The above points can be drawn from the UK Channel Management case.

What did the claimants want?

The claimants sought:

"i) Permission to serve witness statements from witnesses identified from responses to the pilot questionnaires, and/or to serve Civil Evidence Act notices relating to "such responses".

ii) Permission to administer questionnaires to members of the public in the forms proposed for the main survey, and to serve written statements from witnesses identified from the responses and/Civil Evidence Act notices relating to those responses.

iii) That the defendant be not permitted to administer any questionnaire itself without the permission of the court, and if permission is to be sought that it be sought on at least 14 days notice and no later than 14th October 2011. (In the end an agreed position was adopted in relation to this head, and I do not need to consider it further)."

What did the defendant say to those requests?

The defendant disagreed with the questions and the personnel required to deal with the pilot surveys and the form of questions and the personnel required in the current survey. In particular the claimants were going to use trainee solicitors as opposed to a marketing firm the former being more expensive but said to be more diligent than the latter.

The questions on the proposed survey

The claimants proposed the following questions under the proposed survey:

"Q3. I want you to consider the name 'DISCOVERY HISTORY' which is used for a television channel, what are your thoughts.

Q4. Anything else?

Q9 Thank you for your help. Would you mind being contacted again for further information about the answers you have given? [provision for name and address to be recorded if given.]

Q10. Finally, would you have a look through the answers I have written down and sign below if you agree that they accurately record what you said."

What was the defendant's view on the questions?

The defendant took issue with the form of the questions which the judge outlined as follows:

"First line Q3 - this does not say how the name is used. It would be better to

say "I want you to consider the name 'DISCOVERY HISTORY', which is the

name of a television channel.".

It objects to the speaking of the name of the channel, because the interviewer

might give an emphasis in the spoken word which would skew the answer. It

would be better to use a card.

Second line Q3 - the question is faulty because it does not say that the device

is a logo. The pollee should shown the device and be told “which is the name

and logo of a television channel ..."

The pollees should be asked "Why do you say that" after Q3. That is the

important point. To follow the question with an open "Anything else" will not

achieve a useful answer in this respect.

Q10 is too casual. It does not make clear that accuracy is required. Words

should be added to the effect that "It is important that you do this carefully as

this record might be used in legal proceedings and you might be questioned

upon it."

Q10 is too casual. It does not make clear that accuracy is required. Words

should be added to the effect that "It is important that you do this carefully as

this record might be used in legal proceedings and you might be questioned

upon it."

A column heading (for the benefit of the interviewer) which reads "Record

comment if any "should read: "Record exactly what is said and no more and

no less" to remind the interviewer of what must be done."

What was the claimants' response?

The claimants' submission in broad terms was that the defendant's proposal was disproportionate and went far beyond what was permissible as it was seeking to "micro-manage" the survey. The three amendments to question 3 altered the type of question the claimants wanted to ask and therefore potentially the answers to the same.

What did the judge say?

The judge said in summary two main points:

The primary task is for the court to assess and if required dismiss a survey that will not be sufficiently probative to the issues.

If the evidence has the potential to be useful and its real significance cannot be determined at an interim stage then the party apply should be allowed to have the survey it asks for.

In application the judge rejected Mr Baldwin's attempts to modify the form of the survey and will allow the survey to be carried out as drafted.

In relation to using trainee solicitors to carry out the survey the judge accepted the argument that trainee solicitors would be more expensive than a marketing firm. Though the judge was sceptical that a marketing firm would cost only £5k. The judge was of the view that using trainee solicitors would not taint the results necessarily but the judge found that trainee solicitors may subconsciously place emphasis on particular words as they are more alive to the issues in dispute - the claimants propose to limit the use of trainees to those who are not involved in the dispute this was good enough for the judge.

Form of relief in relation to the survey

The judge granted:

Permission for the claimants to administer the questionnaires.

Permission was also given for he claimants to submit witness statements from witnesses identified from the responses to the questionnaires and or to serve civil evidence act notices.

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