Passing off case law is littered with verdicts rubbishing expensively compiled surveys on the issue of misrepresentation. But all is not lost: one out of three was allowed to go to trial in an ongoing bid by the operators of “UKTV Style” to stop the launch of “The Style Channel”. Omar Bucchioni surveys the surveys.
Topic: Brands
Who: UKTV and E! Entertainment Television
When: 11 October 2007
Where: Chancery Division of the High Court of Justice, London
Law stated as at: 1st November 2007
What happened:
A recent decision of the Chancery Division of the High Court of Justice from Mr Justice Lewison on 11th October 2007 has given an interesting view on how the High Court would let a party to passing off proceedings adduce survey evidence.
This was the case of UK Channel Management Ltd v E! Entertainment Inc and another – [2007] All ER (D) 149 (Oct).
The claimant (‘UKTV’) was the owner of a number of television channels in the United Kingdom, designated under the umbrella ‘UKTV,’ one of which was called ‘UKTV Style’.
The defendant (“E!”) operated another TV channel called E! Entertainment Television. It proposed to launch a new television channel named ‘The Style Network’ in early 2008.
UKTV applied to the court for an order preventing E! from designating its channel as ‘The Style Network’ on the basis that to do so would infringe its Community trade mark consisting of ‘UKTV Style’ in stylised form, registered in respect of broadcasting services or, alternatively, would constitute passing-off.
Survey evidence
UKTV sought the court’s leave to produce the following survey evidence:
- Omnibus survey – in which UKTV had participated
- Survey specifically commissioned by UKTV
- Survey produced in response to the E!’s criticism of the second one.
On each of the above points, Lewison J said:
- ‘Allowing the omnibus survey to be adduced would have led to a number of evidential difficulties, including the fact that [UKTV] was unable to produce the questionnaires used or the instructions given to the interviewers. Furthermore, the omnibus survey was of little evidential value’. Leave not granted.
- On the specially commissioned survey, the first question was asked in relation to a different situation from the one in issue in this case. Leave not granted.
- In relation to the third survey the criticisms were less severe. Lewison J stated: ‘An effort had been made to produce a more balanced questionnaire the evidential worth of which would be a matter for the judge at trial’. Leave granted and the court will decide how persuasive the survey evidence is at trial.
Why this matters:
This ruling illustrates the difficulty of establishing a case in passing off and/or, in a trade mark infringement context, a likelihood of confusion or association. Furthermore, the differences between ‘UKTV Style” and ‘The Style Channel’ seem considerable, giving UKTV an uphill task in establishing its case; so for UKTV’s sake one hopes the surviving survey result packs a strong evidential punch!
