In the latest round in the Interflora v M&S dispute over Google AdWords brand bidding, the Court of Appeal considered the admissibility of survey evidence. Theo Savvides, Emily Devlin and Jonathan Mayner report.
Who: Interflora, Marks & Spencer
When: 20 November 2012
Where: Court of Appeal, Royal Courts of Justice, London
Law stated as at: 20 November 2012
The Court of Appeal has handed down an interim decision in the ongoing trade mark dispute between Interflora and Marks & Spencer that is likely to have significant implications for the assessment of evidence in trade mark infringement cases.
Interflora issued proceedings against Marks & Spencer (“M&S”) for trade mark infringement in late 2008. Interflora claimed that M&S’s use of the Google AdWords programme to trigger a sponsored link to M&S’s flower delivery service when the term “Interflora” is searched infringed its trade mark INTERFLORA.
The Court of Justice of the European Union (“CJEU”), on references in this and similar cases, established that keyword advertising is not an infringement per se, and can amount to a form of fair competition. The CJEU established a test for determining circumstances in which particular advertisements may infringe. The relevant test is whether or not the resulting advertisement enables reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. The English High Court has yet to hear the substantive issues in the case in the light of the CJEU’s guidance and trial is listed in April 2013.
The issue decided by the Court of Appeal had initially been heard as the result of an application in the High Court. Interflora had sought permission to adduce evidence from witnesses who had been identified by means of two pilot surveys, in circumstances where they did not intend to rely on the survey itself. Arnold J ruled that evidence could be adduced from among the respondents to the first pilot survey but not from the second. One of the questions in the second survey had been changed so as to lead respondents into assuming an association between Interflora and M&S, with the result that the evidence of respondents to that survey was likely to be unreliable.
Court of Appeal decision
The Court of Appeal decision has:
• Set out the procedure to be followed and the criteria the Court should follow before permission is given for a party to conduct a full consumer survey or rely on witness evidence from respondents to a consumer survey (together referred to as “Survey Evidence” in this note);
• Made clear that Survey Evidence should only be allowed where it is likely to be of real value and this should be weighed up against the cost of obtaining and dealing with the evidence. Evidence from respondents to a survey may be of value in certain limited circumstances, including if it was relied upon to “amplify the results of a statistically reliable survey”;
• Provided clarification as to how English Courts should approach the assessment of what the reasonably well-informed and observant internet user will think when the sponsored link of a competitor appears in response to a search for a trade marked word. The Court of Appeal held that this is an objective test on which a judge is able to make up his or her own mind without the need for either expert evidence or evidence from consumers; and
• Stated that the court’s test for trade mark infringement is conceptually different to that for passing off, requiring an assessment of the “average consumer” rather than “a substantial proportion of the public”. In trade mark cases assessing infringement was “not a question of counting heads, but… a qualitative assessment. The fact that some internet users might have had difficulty in grasping that Interflora and M&S were independent is not sufficient for a finding of infringement”.
Why this matters:
Judges have been reluctant to place much weight on survey evidence in trade mark cases for some time, but have felt compelled to hear such evidence as technically admissible. The Court’s decision sets out clear guidelines as to when such evidence should be admitted and is likely in practice to limit the use of evidence derived from consumer surveys in trade mark infringement cases.
Osborne Clarke are acting for Marks and Spencer in this case. For further analysis, including a summary of the guidelines and procedures set out in the ruling, please refer to the client bulletin at this link.
To read the full transcript of the judgment on Bailii, click the case reference: Interflora Inc and another v Marks and Spencer plc and another  EWCA civ 1501*