Maier & Anor v ASOS Plc & Anor

When permission is sought for witness-collection evidence or a survey in trade mark or passing-off litigation, the court must assess whether the evidence is likely to be valuable and whether its likely utility justifies the cost. The underlying legal test may differ between trade mark infringement and passing off, but the evidential case-management test is general. Real-world evidence of confusion may be valuable. A survey may also be permitted where it tests the defendant’s sign in an appropriate context and complies with the Whitford guidelines.

The claimants, owners of the ASSOS mark, brought proceedings alleging trade mark infringement and passing off arising from the defendants’ use of ASOS for clothing and related goods. They sought permission to contact entrants to a prize draw to investigate apparent confusion and permission to conduct a survey at the London Bike Show. The defendants opposed the applications following the decision in Marks and Spencer PLC v. Interflora Inc and Interflora British Unit, contending that the proposed evidence would lack value or would be disproportionate in cost.

1. The court applied the general evidential test identified in Marks and Spencer PLC v. Interflora Inc and Interflora British Unit [2012] EWCA Civ. 1501. Even where evidence is technically admissible, permission should be granted only if the evidence is likely to have real utility and that utility justifies the cost. This approach applies to witness-collection exercises and surveys in both trade mark and passing-off cases, notwithstanding the different underlying legal questions.
2. Permission was granted to contact selected prize-draw entrants. The responses appeared to show confusion and therefore provided a sufficient basis at this stage for treating the proposed exercise as potentially valuable. The exercise was analogous to the experiment discussed in the Neutrogena case, where the claimant’s name was used and consumers’ reactions were observed. The application concerned only contact with potential witnesses; any later use of witness statements required further permission.
3. Permission was also granted for the London Bike Show survey. The absence of a pilot survey was not fatal in the circumstances. The survey would be relevant to confusion, passing off, damage and the alleged limited goodwill in the cycling market. It would be conducted on the basis that the defendants’ mark and get-up were presented as a clothing tag, thereby supplying sufficient context.
4. The survey had to comply with the Whitford guidelines. On that basis, the likely probative value of the exercise was proportionate to the estimated cost, including the likely costs incurred by the defendants. Permission was granted in the form sought.