ZEE Entertainment Enterprises Ltd & Ors v Zeebox Ltd

Permission to conduct and adduce survey evidence in a trade mark or passing off case requires a decisive cost-benefit assessment. The court must be satisfied that the proposed evidence is likely to be of real value, and that its likely value justifies its cost and effect on the trial. Evidence offering only some assistance is insufficient. A survey may focus on a distinct section of the relevant public where that population is legally relevant to the passing off claim. The absence of actual confusion is relevant, but is not an absolute requirement. The application was dismissed because the proposed survey was unlikely to add real value to the other evidence.

The claimants brought trade mark infringement and passing off proceedings concerning the use of their television-related name and branding and the defendant’s television application. Some trade mark claims had been stayed under article 104, while others remained active.

After two pilot surveys involving British Asian respondents, the claimants sought permission to conduct and adduce a full survey. The central issues were whether British Asians could properly be treated as the relevant public for passing off, and whether the proposed survey would provide sufficient value on likely confusion to justify its cost.

1. Application dismissed. Permission to conduct and adduce the proposed full survey was refused.
2. The court applied the approach summarised in Marks & Spencer v Interflora Incorporated [2012] EWCA Civ 1501 and Interflora Inc. v Marks & Spencer [2013] EWCA Civ 319. The court must decide the application definitively and assess whether the evidence is likely to be of real value and whether that value justifies its cost. Reliability and the effect on the trial are relevant.
3. A survey may be directed to a distinct section of the relevant public if that group comprises the claimant’s actual or potential customers. The group need not be homogeneous. The survey itself did not determine whether British Asians were legally the relevant public.
4. The primary evidence would be conventional evidence about marketing, businesses and services, together with evidence on likely misrepresentation. The proposed survey might merely confirm a conclusion reached on that evidence. Its expected cost and effect on the trial were not justified by its limited likely benefit.
5. The absence of actual confusion is a relevant factor, but not an absolute requirement. It remained relevant irrespective of any survey results.