Marks and Spencer PLC v Interflora Inc & Anor

Evidence from consumers identified through a statistically unreliable survey is not automatically inadmissible in trade mark proceedings. Permission should, however, be refused unless the evidence is likely to be of real value and that value justifies its cost.

Where infringement must be assessed through the hypothetical reasonably well-informed and reasonably observant internet user, selected respondents cannot ordinarily represent that legal construct unless a reliable basis permits extrapolation from their evidence. Evidence may remain useful in special circumstances, including spontaneous real-world confusion, amplification of a reliable survey, unfamiliar markets, acquired distinctiveness and passing off. Applications should be determined early through a cost-benefit assessment under the Civil Procedure Rules 1998.

Interflora alleged that Marks & Spencer infringed its trade marks by purchasing INTERFLORA and variants as Google AdWords. The substantive issue required the trial court to assess whether Marks & Spencer's advertisement enabled a reasonably well-informed and reasonably observant internet user to ascertain that its flower-delivery service was independent of Interflora.

Interflora conducted two questionnaire exercises which it accepted were statistically unreliable. It did not propose to rely upon the questionnaires as surveys, but wished to call selected respondents whose answers were most favourable to its case. Arnold J permitted witnesses from the first exercise but refused permission concerning the second: [2012] EWHC 1722 (Ch); [2012] FSR 32.

The appeal concerned whether such evidence was legally admissible, whether it should ordinarily be excluded under the Civil Procedure Rules 1998, and whether the questions used had tainted the proposed evidence.

1. Appeal allowed. Lewison LJ, with whom Etherton and Hughes LJJ agreed, held that Interflora had not shown that the proposed consumer evidence would have real value. It began with an unreliable dataset and intended to select those respondents most favourable to its case. Both the general and questionnaire-specific objections were established.

2. The reasonably well-informed and reasonably observant internet user is a hypothetical legal construct. The infringement inquiry is qualitative and cannot be resolved by counting consumers. Selected witnesses from an unreliable survey cannot ordinarily stand as proxies for that construct where there is no statistical, mathematical or logical basis for extrapolating from their views.

3. Internet search results are ordinary consumer services. A judge may ordinarily assess their effect using common sense and experience, without expert or consumer evidence. Consumer evidence is not invariably inadmissible, however. It may assist where it records spontaneous real-world reactions, amplifies a reliable survey, concerns an unfamiliar specialist market, addresses acquired distinctiveness or arises in passing off. Other unusual cases may also justify it.

4. Under Rule 32.1(2) and Rule 1.4(2)(h) of the Civil Procedure Rules 1998, technical admissibility does not compel admission. The previous practice of admitting the evidence unless satisfied that it would be valueless placed the burden the wrong way round. Permission should be given only where the court is satisfied that the evidence is likely to be valuable and that its likely utility justifies the cost. The earlier approach in UK Channel Management Ltd v E! Entertainment Television Inc [2007] EWHC 2339 (Ch), followed in A & E Television Networks LLC v Discovery Communications Europe Ltd [2011] EWHC 1038 (Ch), should no longer be followed.

5. An application should be made early. A true pilot survey may be undertaken without permission at the party's costs risk, but any further survey and any evidence from respondents require permission. The applicant must disclose the methodology, all responses, selection process, proposed statements and costs, and demonstrate compliance with the applicable survey safeguards. The availability of an effective challenge, including any waiver of privilege over witness selection and preparation, may affect probative value.

6. The questions used here also prompted speculation about the very relationship in issue. The second questionnaire carried an innuendo that such a relationship existed. The judge was entitled to regard the resulting evidence as tainted, and the first questionnaire likewise failed to produce evidence capable of advancing Interflora's case.

1. Court of Appeal (Civil Division): The appeal was allowed unanimously: [2012] EWCA Civ 1501. Permission to call the selected survey respondents was refused.
2. High Court, Chancery Division: Arnold J permitted Interflora to call witnesses identified through the first questionnaire exercise but refused permission for witnesses from the second: [2012] EWHC 1722 (Ch); [2012] FSR 32.