“M&S Flowers Online www.marksandspencer.com/flowers Gorgeous fresh flowers & plants. Order by 5pm for next day delivery” www.marksandspencer.com/flowers Gorgeous fresh flowers & plants. Order by 5pm for next day delivery”
“… the manner in which the Defendant’s advertising is presented does not enable 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 Claimants or an undertaking economically connected to the Claimants or on the contrary originate from a third party.”
“… the use complained of is detrimental to the distinctive character of the Trade Marks because there will be a blurring or dilution that will lessen the capability of the Trade Marks to distinguish the Claimants and their goods or services from those of others in that it does not enable 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 Claimants or an undertaking economically connected to the Claimants or on the contrary originate from a third party.”
“A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; (b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. 2. The following, inter alia, may be prohibited under paragraph 1: … (b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; … (d) using the sign on business papers and in advertising.”
“44. The question whether a trade mark's function of indicating origin is adversely affected when internet users are shown, on the basis of a keyword identical with the mark, a third party's advertisement, such as that of a competitor of the trade mark proprietor, depends in particular on the manner in which that advertisement is presented. That function is adversely affected if the advertisement does not enable 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…. In such a situation, which is, moreover, characterised by the fact that the advertisement appears immediately after the trade mark has been entered as a search term and is displayed at a point when the trade mark is, in its capacity as a search term, also displayed on the screen, the internet user may be mistaken as to the origin of the goods or services in question…. 45. Where a third party's advertisement suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on that mark's function of indicating origin. Similarly, where the advertisement, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that reasonably well-informed and reasonably observant internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or whether, on the contrary, it is economically linked to that proprietor, the conclusion must be that there is an adverse effect on that function of the trade mark…. 46. It is for the referring court to assess whether, on the facts of the dispute before it, the trade mark's function of indicating origin as described in the preceding paragraphs is, or is liable to be, adversely affected…. … 49. Indeed, if the referring court's assessments of the facts were to show that M & S's advertising, displayed in response to searches performed by internet users using the word 'Interflora', may lead those users to believe, incorrectly, that the flower-delivery service offered by M & S is part of Interflora's commercial network, it would have to be concluded that that advertising does not allow it to be determined whether M & S is a third party in relation to the proprietor of the trade mark or whether, on the contrary, it is economically linked to that proprietor. In those circumstances, the function of the INTERFLORA trade mark of indicating origin would be adversely affected. 50. In that context, as has been observed at paragraph 44 of this judgment, the relevant public comprises reasonably well-informed and reasonably observant internet users. Therefore, the fact that some internet users may have had difficulty grasping that the service provided by M & S is independent from that of Interflora is not a sufficient basis for a finding that the function of indicating origin has been adversely affected. 51. In carrying out its examination of the facts, the referring court may choose to assess, first, whether the reasonably well-informed and reasonably observant internet user is deemed to be aware, on the basis of general knowledge of the market, that M & S's flower-delivery service is not part of the Interflora network but is, on the contrary, in competition with it and, second, should it become apparent that that is not generally known, whether M & S's advertisement enabled that internet user to tell that the service concerned does not belong to the Interflora network. 52. In particular, the referring court may take into account that, in the present case, the commercial network of the trade mark proprietor is composed of a large number of retailers which vary greatly in terms of size and commercial profile. The Court considers that, in such circumstances, it may be particularly difficult for the reasonably well-informed and reasonably observant internet user to determine, in the absence of any indication from the advertiser, whether or not the advertiser – whose advertisement is displayed in response to a search using that trade mark as a search term – is part of that network. 53. Having regard to that situation and to the other matters that it may consider relevant, the referring court will, in the absence of any general knowledge such as that referred to at paragraph 51 of this judgment, have to determine whether or not the use of words such as 'M & S Flowers' in an advertisement such as the one set out at paragraph 19 of this judgment is sufficient to enable a reasonably well-informed and reasonably observant internet user who has entered search terms including the word 'Interflora' to tell that the flower-delivery service offered does not originate from Interflora.” (Emphasis added)
“Thinking specifically about this search result (POINT to MARKS & SPENCER RESULT). What if anything do you think this tells you about any relationship between Interflora and Marks and Spencer?”
“Thinking specifically about this search result (POINT to MARKS & SPENCER RESULT). Is there anything that tells you it is not related to Interflora?”
“As Mr Phillips acknowledges … the purpose of a pilot survey is to ascertain the best methodology for undertaking a survey. As stated in “The Practice of Market and Social Research” (the recommended textbook for those studying for the market Research Society Advanced Certificate…) “conducting a pilot survey is an invaluable way of testing it [a questionnaire] out – it will show which questions are difficult, which ones give the type of answers you were expecting and so on”.”
“The problem, as I see it, at this level of the judicial hierarchy is that there is considerable precedent for judges of this Division taking into account the evidence of witnesses obtained by means of a survey in circumstances where the survey itself is either not relied upon or is conceded not to have statistical validity. … Furthermore, in a number of those cases the judges in question not merely admitted, but also relied upon the evidence of witnesses obtained by such surveys in circumstances where they acknowledged that the questions posed in the surveys were flawed. 13 In those circumstances it seems to me that the present state of the law is that evidence obtained from witnesses by virtue of the fact that they have been respondents to a survey is admissible and may be probative, even though the survey itself is not and cannot be relied upon and even though the questions posed in the survey were flawed. It follows that I am unable to accede to the first submission made by counsel for Marks & Spencer.”
“In my view, it is not possible to draw a hard and fast distinction between questions which are objectionable and questions which are not objectionable. There is a spectrum of questions between questions which are completely open-ended on the one hand through questions that prompt speculation, to questions that have a degree of leading quality to them, to questions that are completely misleading on the other end of the spectrum. Where on the spectrum a particular question lies is a matter of judgment in the individual case.”
“It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By “enough”
“…the plaintiffs have managed to adduce what I find to be convincing evidence that there is deception and confusion and that this is above a trivial level, even though most people are not deceived.” (Emphasis added)
“Many people, and particularly those who are more observant, would not be confused. For them the words “Swiss Chalet” will signify nothing but a pretty sounding name for a bar of chocolate. They will convey no other message. However I have come to the conclusion that there are some who will be struck by the largest and most prominent word on the defendant's packaging namely “Swiss” and think that it is a reference to an attribute of the product itself. I think it is likely that some will think that it is an indication that the product is Swiss chocolate. Some, like Mr Crocker, may not see the reference to Cadbury. Others might not believe that all Cadbury chocolate is made in England. In fact it is not all made here. Cadbury like many other manufacturers has set up factories or formed alliances abroad. Further, for some the get up of the packaging with its typical Swiss scene will tend to reinforce the message of the word “Swiss”
“Next the ordinary consumer test. The ECJ actually uses the phrase “average consumer” (e.g. Lloyd paras [25] and [26]). The notion here is conceptually different from the “substantial proportion of the public” test applied in passing off (see e.g. Neutrogena Corp v Golden Ltd[1996] RPC 473 ). The “average consumer” is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. But in the end I think they come to the same thing. For if a “substantial proportion” of the relevant consumers are likely be confused, so will the notional average consumer and vice versa. Whichever approach one uses, one is essentially doing the same thing—forming an overall (“global”) assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptional over-elaboration is apt to obscure this and is accordingly unhelpful. It may be observed that both approaches guard against too “nanny” a view of protection—to confuse only the careless or stupid is not enough.”
“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.”
“The usage in question must be by those engaged in the relevant trade or activity. Normally that will be the usage of the average consumer of the goods in question as described in Lloyd Schuhfabrik. Obviously the evidence on that question is not limited to those who are consumers or end-users but may extend to others concerned in the trade such a manufacturers, wholesalers and retailers. But I do not think that the court is assisted by repetitious evidence from individuals put forward by the parties, whether expressly or not, as archetypal average consumers or end-users for, by definition, no one individual is such a consumer or end-user and the issue cannot be resolved by counting heads. We were told that the judges before whom cases of this sort are heard have increasingly imposed restrictions on the quantity of such evidence they are prepared to admit. In my view that practice is to be encouraged.”
“On that basis the evidence of a capability to distinguish to which I have referred should be rejected as not applicable to the average consumer as defined by the European Court of Justice. Such a person is deemed to be reasonably informed, reasonably observant and circumspect. But the actions and beliefs of the persons who prompted the comments of the judge I have referred to in paragraph 36 should not, in my view, be attributed to the average consumer. In the case of the first category the relevant action appears to have been prompted by carelessness and ignorance, which are not to be attributed to the average consumer. In the case of the second the judge rejected the evidence as sufficient to undermine his clear findings at page 38 that in 1979 and thereafter the expression Bach Flower Remedies and the word Bach would have been used and understood in a generic sense. In those circumstances I cannot see how any different understanding can be attributed to the average consumer. If the average consumer is to be regarded as reasonably informed, observant and circumspect then he must know the sense in which the word Bach was used and understood and that sense was generic.” (Emphasis added)
“I agree with Morritt L.J. that, in seeking to apply the test, the court is unlikely to be assisted by repetitious evidence from individual consumers, put forward by each party as the embodiment of the average consumer. The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the question: would he say that the words or word identify, for him, the goods as originating from a particular undertaking?” (Emphasis added)
“Whether in any case such evidence will be admissible will depend upon a variety of factors which it is neither possible nor desirable to define. Broadly, the test in such cases must be whether the experience which a judge must be taken to possess as an ordinary shopper of consumer will enable him, just as well as any other, to assess the likelihood of confusion. If it will, then the evidence will not be admissible. If, for whatever reason, it will not, then such evidence will be admissible.”
“In the present case I am concerned with a straightforward food product which, according to the plaintiff's evidence, is widely distributed throughout the United Kingdom and is purchased in huge numbers by ordinary members of the general public. How in these circumstances it assists the court to have, on the one side, a body of persons, experienced in retailing, to testify to the likelihood of deception and to have, on the other hand, a collection of similar persons testifying to the converse proposition, the more particularly when the expressions of opinion are no more than bare assertions of the likelihood of confusion, I cannot see. In my judgment therefore I rule that such evidence is, in this case, inadmissible.”
“My overall feeling was that although I did not consider them to be inadmissible nevertheless the circumstances in which those affidavits had been obtained were such that, even assuming that no leading questions had been put to the deponents and that, notwithstanding the use of pre-prepared affidavits tailored to the particular evidence of each deponent, the plaintiff's solicitors had not suggested to the deponents how they should frame their responses, I am not able to attach very much weight to them. On the other hand I do not feel able to disregard them altogether. I cannot, on an interlocutory motion, simply brush them aside. They do provide some basis for the suggestion that members of the public may indeed be deceived when seeing a Nissin Cup Noodles container into thinking that it comes from the plaintiff's Pot Noodle range. What then is the state of the evidence on the question whether the get-up of the Nissin Cup Noodles container is likely to confuse or deceive? There is some evidence although, as I have stated, unsatisfactory in a number of respects from members of the public of the likelihood of confusion. If, contrary to my view on the admissibility of evidence from those with experience in the trade, such evidence is admissible then there is a body of evidence which, though contradicted by the defendants' evidence, supports the likelihood of confusion. Over and above that there is my own reaction as somebody possessing experience of ordinary shopping habits. In all the circumstances, even if I disregard the evidence of those with experience in the trade, I cannot say that there is no serious question to be tried as to the likelihood of the Nissin Cup Noodles product being confused with the plaintiff's Pot Noodle products.”
“The services sold by the parties were identical and were of a kind familiar to members of the public. In those circumstances, I see no reason why the hearing officer should not have decided the issue of similarity on his own in the absence of evidence apart from the marks themselves and evidence as to the goods or services to which they were, or, in the case of esure's mark, were to be applied.”
“[30] There have been several cases in which the Court of Justice has had to consider whether a description, trade mark or promotional text is misleading under the provisions of the Treaty or of secondary legislation. Whenever the evidence and information before it seemed sufficient and the solution clear, it has settled the issue itself rather than leaving the final decision for the national court. [31] In those cases, in order to determine whether the description, trade mark or promotional description or statement in question was liable to mislead the purchaser, the Court took into account the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect, without ordering an expert's report or commissioning a consumer research poll. [32] So, national courts ought, in general, to be able to assess, on the same conditions, any misleading effect of a description or statement designed to promote sales. [33] It should be noted, further, that, in other cases in which it did not have the necessary information at its disposal or where the solution was not clear from the information before it, the Court has left it for the national court to decide whether the description, trade mark or promotional description or statement in question was misleading or not.”
“[35] The Court has not therefore ruled out the possibility that, in certain circumstances at least, a national court might decide, in accordance with its own national law, to order an expert's opinion or commission a consumer research poll for the purpose of clarifying whether a promotional description or statement is misleading or not. [36] In the absence of any Community provision on this point, it is for the national court, which may find it necessary to order such a survey, to determine, in accordance with its own national law, the percentage of consumers misled by a promotional description or statement that, in its view, would be sufficiently significant in order to justify, where appropriate, banning its use.”
“… in order to determine whether a statement or description designed to promote sales of eggs is liable to mislead the purchaser, in breach of Article 10(2)(e) of Regulation 1907/90, the national court must take into account the presumed expectations which it evokes in an average consumer who is reasonably well-informed and reasonably observant and circumspect. However, Community law does not preclude the possibility that, where the national court has particular difficulty in assessing the misleading nature of the statement or description in question, it may have recourse, under the conditions laid down by its own national law, to a consumer research poll or an expert's report as guidance for its judgment.”
“…As anyone who uses internet searches knows, in addition to the results of a search under a particular name or phrase, one often gets unasked for “banner” advertisements. Most of the time they are nothing but an irritation and are ignored. But you can, if you wish, “click-through”, i.e. click on the banner and be taken to the advertiser's site. …The web-using member of the public knows that all sorts of banners appear when he or she does a search and they are or may be triggered by something in the search. He or she also knows that searches produce fuzzy results—results with much rubbish thrown in. The idea that a search under the name Reed would make anyone think there was a trade connection between a totaljobs banner making no reference to the word “Reed” and Reed Employment is fanciful. No likelihood of confusion was established.”
“Adwords are a familiar feature of life on the internet, and the reaction of the average consumer, when the sponsored link to 32red.com came up on his screen, would I think be one of indifference or irritation, but not of confusion. If the consumer then clicked on the 32Red site, its clear branding could have left no room for reasonable doubt about the identity of the casino whose services were on offer. If the consumer did not click on the site, he will presumably have continued with the search which he originally intended, and is most unlikely to have supposed that there was any business connection between 32Red and the site which he originally sought to access. In a very few cases, the customer may have been grateful for the reminder that there was another online casino called 32Red, but in such cases confirmation or clarification would have been the result, not confusion. I am therefore wholly unpersuaded that the effect of 32Red's adword campaign was to mislead the public.”
“The reason is … because such evidence does not simply put before the court the spontaneous reaction of members of the public who have been exposed to … [a party’s] advertising material in actual use or the defendant’s allegedly offending advertisement in actual use; it is evidence obtained as a result of the artificial application to members of the public of stimuli directed at provoking reactions and responses. The reason for Pumfrey J’s earlier direction was to ensure that their reactions and responses were provoked by appropriate questions.”
“Whether the survey proves anything at trial is, I think, a matter for the trial judge. Although I am sceptical about its value I do not feel so confident that the answer is that it proves nothing that I think it right to rule it out at this stage.”
“In the case before me, as will appear, it is necessary to bear in mind the juridical basis of what it is that the court is doing when exercising its control. In my view it is doing (at least) the following: i) So far as a party is going to seek to put expert evidence before the court, the court is exercising its power to control the amount and nature of expert evidence in order to make sure the expert evidence is proper evidence, admissible, and proportionate. ii) So far as a party seeks to put in the actual answers to questions, the court is ensuring the evidence is admissible and probative. iii) So far as the court is controlling the calling of live witnesses obtained as a result of some form of survey evidence (so-called witness collection exercises) it is again ensuring that the evidence is admissible and probative. In particular, it is acting to prevent a party seeking to call a witness whose evidence is going to be tainted to an unacceptable degree by the mechanism under which it is collected (an inappropriate question). iv) In so doing, the court is ensuring that costs are not wasted and are proportionate. It is wrong for costs to be wasted in conducting hopeless surveys, for the other party to have to waste costs dealing with that evidence, and for court time to be wasted in dealing with it at trial. v) When a court is acting in this capacity it must bear in mind that it is acting at some remove from the trial. If it disallows a survey it is concluding, short of a trial, that evidence which one party wishes to adduce should not be allowed in because it will be of no or insufficient value. In embarking on that exercise it must acknowledge that there will be cases in which it is not wholly clear that the evidence in question will be valueless. In those circumstances the right course may be not to bar the evidence or survey at the interim stage, but to allow it and to have more informed argument at the trial (or conceivably at another interim stage, provided that that is a cost-effective way of going about the matter).”
“to avoid the spending of time and money on what is clearly irrelevant and unsatisfactory evidence.”
“In Interflora’s submission, Mann J’s judgment in this respect is over-cautious and should be rejected. Whenever a court gives permission to carry out a survey plus witness statements of respondents, it will not know what the respondents will say or what their evidence will say or what the CEA notices will say. Mann J’s approach would turn all survey permission applications into an even more costly, two-stage process. First, permission would have to be sought to carry out a survey and secondly, witness statements would have to be prepared and adduced and a separate permission be sought in relation to those. There is no precedent for such an unwieldy approach and it seems contrary to the cost-saving objectives of the practice for seeking permission that was originally devised by Pumfrey J in the O2 case.”
“… there should be only a single application in relation to survey evidence at which the court considers the merits of the questions and methodology and rules on whether the survey should be permitted to be adduced in evidence once it has been carried out. That permission will necessarily carry with it permission to adduce evidence from selected respondents to the survey to give direct oral evidence of their experiences. Normally the application for permission to adduce survey evidence should be made, as envisaged by Pumfrey J in O2, following the conduct of a pilot survey so that the court is furnished not only with the proposed survey materials but the initial results of putting those materials into practice from a limited pool of respondents. It will, with that material, be in a much better position to assess the value of the survey which is proposed to be carried out.”
“One theoretical possibility, in a case like the present, would be for a party to call such of the 1,200 respondents to the Roy Morgan survey as were contactable. This course would have the advantage of providing a fairly selected group of witnesses; subject to any distortion which might be caused by difficulties in locating respondents. But it would add enormously to the cost and duration of a trial. The second possibility would be for a party to call evidence from a lesser number of selected witnesses. This course was taken in Ritz. The plaintiff there called 152 members of the public. The majority of these witnesses were stopped in a public place by a representative of the plaintiff and questioned as to the significance to them of the word "Ritz". It seems that those who gave answers favourable to the plaintiff's case were asked to give evidence. Those who did not, were not. As a result, the evidence of these persons was of negligible value. All that it established was that, with the expenditure of sufficient effort and money, 152 people could be found somewhere in Australia who claimed to associate the word "Ritz" with the plaintiff. The 152 witnesses were not a fair sample of the general public; so that, as McLelland J noted at 215, there was "no ground in the evidence for any extrapolation on a statistical basis, or on the basis of any mathematical or logical probability, of the views of the 'public' witnesses (or any selection from them) as representing the views of the relevant class of the Australian public or a significant section of that class". The plaintiff was not even willing to reveal the total number of persons interviewed; for all the judge knew, the persons who associated the word "Ritz" with the plaintiff may have been a tiny minority. The tender of such partisanly selected evidence was an absurdity. A further possibility is that there will be no evidence about matters such as public recognition of names or attitudes to products. Perhaps this would not matter greatly. As the authorities emphasise, where the question is whether use of a particular name or trade mark would constitute misleading conduct or cause confusion, the court must make its own assessment of the situation. The position is similar where the question is whether one product is substitutable for another. But information is preferable to intuition. Where the state of public knowledge of, or attitudes to, some subject is a relevant factor in the court's adjudication of an issue, it is better to admit than to preclude evidence on those matters.”
“The appellants circularized 91 members of the public asking them to answer the following question: "If you were offered in the ordinary way of trade, slippers described as 'Glastonbury slippers,' what would the word 'Glastonbury' mean to you?" They received 83 replies. To save expense they only filed affidavits by 11 of those who had replied: but in order to prove that the 11 were a proper and fair sample of the bulk, the remaining 72 replies were exhibited to an affidavit. This procedure was the subject of severe comment in the Court of Appeal. No doubt it was technically wrong; but the appellants not unnaturally shrank from the great expense of filing some 70 affidavits. It will be wiser perhaps in a similar case in the future to file an affidavit merely stating the number of the other answers which have been received, and that they are open to inspection by the other side's advisers. The Court will then be protected from the embarrassment of being in possession of documents which are in no sense evidence of the facts stated therein.”
“Moreover, I am of opinion that a great deal, if not the bulk, of the evidence relied on by the respondents was evidence of little weight. If a manufacturer in a particular town chooses for some years to use the name of the town as a trade mark in respect of his goods, and then (whilst still manufacturing there) proceeds to ask all his trade customers what the name of the town indicates to them, it is, I think, inevitable that many of them will reply that the name indicates to them the manufacture of the person from whom they have been in the habit of procuring the goods. The association of the goods with the place is not, in my opinion, thereby negatived. Accordingly, for my part, I attach small weight to the affidavits of the respondents' customers - all of them, or nearly all of them, framed in the same words - stating that the name of "Glastonburys," when used in connection with slipper-shoes and over-shoes, indicates the respondents' goods to the exclusion of those of all other manufacturers. I should add that it is plain that such a customer of the respondents can only give evidence as to what the name means to him and that he is not entitled to give evidence as to what the name would mean to any one else in the trade or to the public. Evidence as to the meaning which members of the public, actual or probable buyers of sheepskin slippers, would attach to the word is exceedingly scanty.”
“In the case of household articles in general use such as slippers, the meaning which the word in question conveys to the purchasing public is of vital importance. In the present case the direct evidence given by the public does not support the view of distinctiveness. No such direct evidence was tendered by the respondents. It is true that some of the trade witnesses testified that their customers ordered "Glastonburys" or "Glastonbury Slippers," and that in response to such orders they supplied the respondents' goods; but this evidence (in the absence of the customer's explanation) is subject to the criticism that such expressions may in fact only have been used as indicative of the place of manufacture.”
“Allowing for every criticism that was made of the survey evidence by the American company's statistical experts, the fact remained that at least 12% to 35% of the adult population would think that the GE mark on domestic electrical goods signified that the goods were manufactured by the English company.”
“But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a “jury question.”
“In the instant case all three members of the Court of Appeal were alert to the danger of relying upon their own idiosyncratic knowledge and temperaments. All gave due weight to the evidence adduced upon the issue at the hearing and to the criticisms of it by the trial judge. All were of opinion that they themselves would have been likely to be confused by the use of the rondel mark simpliciter upon electrical consumer goods if, as had been the fact before the hearing of the appeal, they had known of the English company but had not known of the American company. My Lords, I myself, as a member of the public in the United Kingdom, am idiosyncratic in that I have for many years known of both companies. I should not have been likely to be confused by the use of the rondel mark simpliciter upon electrical consumer goods. Nevertheless, my common sense convinces me that there would be a likelihood of confusion among a substantial number of members of the public who did not share my idiosyncratic knowledge.”
“I accept that they did not in themselves constitute a representative sample of the whole adult population—but clearly they did constitute in themselves a substantial part of the whole representative sample of the survey and were, therefore, as Mr Aldous submitted, representative of a very substantial number of persons, members of the public.”
“In many, perhaps the majority, of passing off actions which depend on the get-up of an allegedly deceptive product, it is inevitable that judges will in the end make their own assessment of the likelihood of deception, even in cases where there is extensive evidence of confusion.”
“…it would be very dangerous for me not to give full weight to the evidence as a whole in a case where what is in issue is a question off passing off in a distant country with whose people and culture the court is unfamiliar.”
“My view, unaided by evidence, would be that this would be likely to be taken by people as an advertisement for a “Big Mac” hamburger and, in the light of the evidence of reputation, so far as a very large number of people are concerned, this tube card would be taken as advertising McDonald's “Big Mac” hamburger. Because of the prominence of the Burgerking logo it is, I think, quite plain that a by no means negligible number of people might be led into thinking that there is an association between “Big Mac” and Burgerking, and that they can get a “Big Mac” at the Burgerking establishments. Of course there are bound to be a number of people, it was a relatively small number of people in this case, who are going to go so far as to identify this advertisement as advertising a Burgerking “Whopper,” but the evidence in this case quite clearly shows, as I would expect, that practically nobody is going to pay any attention to the rest of the small print at all. This advertisement is not going to be read as a knocking advertisement, and I myself never realised that it was intended to be an advertisement of this character.”
“In my view the poll was so flawed, for the reasons I have indicated, that it cannot be relied upon at all. I agree with the judge on that, though I do not think that he was justified in referring, as he did in certain passages of his judgment, to deceit or fraud. Nor, it seems to me in view of the incorrect premises upon which the poll was conducted as I have indicated, can one safely place any reliance upon the affidavits subsequently obtained by the plaintiff from the respondents. They are respondents who were subjected to an unsatisfactory poll and asked questions at the poll upon false premises, and those are matters which plainly affected their minds by the time they came to swear their affidavits. In the circumstances I would not myself be prepared to rely upon those affidavits at all.”
“I am dealing with commonplace goods sold for domestic use to the public at large. Setting aside, I hope, any relevant idiosyncracies of knowledge or temperament, if I ever had any, I remain of the same opinion as that which I reached at the beginning. My first impression is unshaken. These marks do not so nearly resemble each other as to be likely to deceive or cause confusion when used on the same goods.”
“…consumer surveys are costly to produce. They can, moreover, sometimes be based on the wrong questions and thus produce irrelevant or unhelpful responses or for some other reason, as in this case, be of no evidential value.”
“These basically took three forms. As far as the Mark I lemons were concerned, shoppers were stopped in the street and asked what the Mark I lemon, which they were shown, was. A very considerable proportion said it was a Jif lemon, either spontaneously, or after having initially replied that it was lemon juice, when they were asked whether it was any particular brand. As far as the Mark II and III lemons were concerned, there were rather longer interviews in a more relaxed atmosphere in a room in a hall or public house or similar, with again roughly the same results. There was a third experiment, in which on pancake day (which is a day which naturally accounts for a large number of the sales of Jif lemon) the Mark III was prominently displayed in some co-operating supermarkets, in the trays which were proposed for its packaging, and once again the defendants' proposed lemon was picked up unhesitatingly by a large number of shoppers under the impression that they were buying Jif.”
“But in the present case firstly, both sides have presented such evidence. Second, the plaintiff tendered for examination by the defendants the whole segment of witnesses, starting with the professional organisers of their surveys, through the persons who conducted their interviews down to a fair sample, so far as it was possible for the court to judge, of the persons who had been interviewed. These persons ranged from fairly humble housewives, doubtless noted for their kind hearts and passion for Jif lemon juice with pancakes, but with no other great claim to fame, to some extremely intelligent shoppers, who, immediately they were put on notice that there might be some doubt as to the product they had purchased, did not require very long to appreciate the exact position of things. Third, the plaintiff supplied the defendants with the names of their, or at any rate, some of their, potential witnesses, and the defendants did indeed, in the interlocutory stages of the first action, interview them. They did not interview any of such potential witnesses in relation to the second action. As a result of the interviews that were carried out, there was no complaint whatsoever as to the views of those witnesses having been misrepresented, or exaggerated, in the slightest.”
“But, at the least, I feel that I am now fully instructed in the way in which shoppers who shop, as the vast majority of us willy nilly have to shop, in self-service stores of some description, do so shop, and of what their apprehension of the Jif lemon really is.”
“Now, paying proper attention to all these matters, and placing myself in the position of a shopper in relation to whom all these matters apply as part of his or her shopping knowledge and habits, I have really no hesitation in coming to the conclusion that there is bound to be confusion in the shopper's mind in relation to all three marks of the defendants' lemons. None of them is really sufficiently distinctive, nor are the labels such as to impinge sufficiently forcefully upon the shopper's attention, as to call immediately to mind that the item is not a Jif lemon: it would be supposed by a very large number of shoppers—probably, on any attempted arithmetical calculation running into millions—that each of the defendants' lemons was no more than an immaterial variant of the Jif lemon.”
“… did not in this court rely on it as constituting more than corroboration of Colmans' other evidence as to the likelihood of confusion. I do not think that in order to satisfy this court as to the likelihood of confusion Colmans need to rely on the market survey evidence at all.”
“A judge brings to the assessment of marks his own, perhaps idiosyncratic, pronunciation and view or understanding of them. Although the issue of infringement is one eventually for the judge alone, in assessing the marks he must bear in mind the impact the marks make or are likely to make on the minds of those persons who are likely to be customers for goods or services under the marks. Not all customers are the same. It is therefore sometimes of assistance for the court to hear evidence from witnesses who will help him to assess the variety of ways in which members of the target market will pronounce the marks and what, to them, will be the visual or phonetic impact of the marks. When considering infringement it is also necessary to bear in mind the possible impact of imperfect recollection on the part of members of the target market.”
“I have come to the conclusion that the defendant's mark, in either form, is so similar to the plaintiff's registered mark that in use there exists a substantial likelihood of confusion on the part of the relevant public. That confusion is likely to take the form that some members of the public as a result of imperfect recollection will think the marks are the same while others will think that they are associated in the sense that one is an extension of the other …or otherwise derived from the same source.”
“As is usual in passing off cases, the plaintiff produced a number of members of the public to prove that confusion was likely. No attempt was made to choose a group of people who would represent a reasonable cross-section of the population of England or London. The plaintiff did not have the financial resources to engage in that sort of exercise. Instead its solicitors attempted to contact all those customers who at one time or another had left their name and telephone number at the WAGAMAMA restaurant. On the evidence, no attempt was made to skew the results.” (Emphasis added)
“Judicial first impression is of some importance, especially where the goods in question are familiar and inexpensive (as opposed to the sort of specialised designer label goods with which Sir Nicolas Browne-Wilkinson V-C was concerned in Guccio Gucci v Paolo Gucci[1991] FSR 89 … ). My impression of the puffin packaging (in all four colours or varieties) is that it would cause a substantial number of members of the public to suppose that there was a connection between the Puffin biscuit and the Penguin biscuit. Despite the evidence of isolated mistakes, I do not consider that a substantial number would believe that the Asda Puffin is the McVities Penguin. But many would believe that the two must be made by the same manufacturer. That judicial first impression was largely confirmed by the oral evidence. Witnesses repeatedly referred to the dark seabird, the black lettering and the similarity of names as the features which together induced that belief. One or two came close to saying that the Puffin biscuit must be produced by the manufacturer of the Penguin, because otherwise it would not be allowed (there is here some hint of a self-fulfilling prophecy, and this point must not be given any more weight than it merits).”
“During the course of the proceedings, a survey was conducted on behalf of DaimlerChrysler. The results of this survey were not relied on to show confusion and deception in the minds of the public caused by Mr Alavi's use of MERC, but to identify particular members of the public whose evidence would, in the claimant's view, be of assistance in deciding the action. This employment of the survey results accords with what Jacob J. thought was the right course in the Neutrogena/Neutralia case … It is of much more value to hear evidence of the public than to see imperfect records of unsupervised interviews. In this case there was a preliminary survey by White & Case, DaimlerChrysler's solicitors, and then a more complete survey by NOP. The White & Case survey covered about 240 members of the public, who were shown three of the defendant's T-shirts. It should be remembered that the public were shown the T-shirts, not in a commercial context, but in the possession of an interviewer in the street. Such an approach will of course excite trains of thought or speculation, which is why such surveys are most use in identifying potential witnesses who are prepared to be cross-examined. In response to “What are your first thoughts on this?” and “anything else?” if an uninteresting answer was given, about 20 or so interviewees referred to the claimant, and one referred to the defendant.”
“Absent the evidence to which I have referred which has satisfied me that some people use the word Merc as an abbreviation or nick-name for Mercedes Benz, I should have regarded the allegation of infringement of the U.K. Clothing Marks under sub-section 10(2) as hopeless. What I have to consider is whether there is any likelihood of what I can call “spillover” of this use of MERC in respect of the clothing marks, having regard to the way in which the clothing marks are otherwise used. So far as Mr Alavi's shop is concerned, there obviously is no spillage. So that use is unaffected. This leaves the use on the clothing itself. In my judgment, Mr Anderson's thought processes, and those of Mrs Beaumont, were not those which are relevant to a customer for the claimant's goods. They are not shown to be in any way characteristic of the public, and are plainly, it seems to me, deductive. In my view, the possibilities of such spillover are very slight. I do not think the evidence can justify a finding that there is a likelihood of confusion between the defendant's mark and the U.K. Clothing Marks.”
“…were not attempting to rely upon the survey as such but rather as a witness gathering exercise. They relied not upon the survey but upon the evidence that the witnesses so identified actually gave in their witness statements and under cross examination. This is certainly a permissible approach and it is one that was followed in United Biscuits (UK) Ltd v Asda Stores Ltd [1997] R.P.C. 513. Further, as was said in Neutrogena Corp v Golden Ltd [1996] R.P.C. 473 at 485 to 486, questionnaire evidence alone is seldom helpful and frequently unnecessarily elaborate and, I would add, very expensive. Unless the court has some real evidence, tested in cross examination, it is very difficult to determine what the respondents were actually thinking. However, it is also important that the court is given the full picture of any witness gathering exercise so that the court can assess whether the witnesses actually called truly reflect the views of the average consumer. In the present case I have not been given a complete picture because I have no evidence as to how the respondents or locations were selected. However, it is fair to say that all the questionnaires have been disclosed and I have been able to make an assessment of the respondents upon whom the claimants have chosen to rely from the cross examination.”
“I have considered all of the evidence of the respondents who came to court. I must be cautious in drawing conclusions from them for all the reasons I have given. They were, however, all witnesses who gave their evidence carefully and fairly and do, in my judgment, give me some idea of the way that the average consumer would perceive the products in issue. I believe they support my impression that there is a real likelihood that the average consumer would, on seeing the Christmas Tree product, think that it is another product in the Magic Tree range or a Christmas version of the Tree products with which he or she is familiar.”
“In all the circumstances, I consider that Mr Blackett's evidence on the survey is admissible, notwithstanding that much of it is based on what he was told by MDL. In so concluding, I take into account all the matters I have mentioned, as well as Mr Blackett's unchallenged professional endorsement of MDL's expertise, Mr Blackett's personal collaboration with MDL in connection with the survey, his own marketing experience and expertise, and his knowledge and understanding of the RTR and the appendix to it.”
“The need for circumspection in the assessment of questionnaire survey evidence is well-understood. The concern is that to a greater or lesser degree: “Interviews and questionnaires intrude as a foreign element into the social setting they would describe, they create as well as measure attitudes, they elicit atypical roles and responses, they are limited to those who are accessible and will co-operate and the responses obtained are produced in part by dimensions of individual differences irrelevant to the topic at hand”
“A number of authorities make it clear that great care needs to be taken with survey evidence obtained from members of the public in passing off actions: see e.g. Scott Ltd v NicePak Products Ltd[1989] FSR 100 . In particular, if the object of the exercise is to establish consumer reaction to seeing a product for the first time, it can be misleading to suggest to the interviewee, by the form of the question, that the product is one which they could already have seen on the market: see per Lewison J in UK Channel Management Ltd v E! Entertainment Television Inc[2007] EWHC 2339 at [9] to [12] and per Geoffrey Hobbs Q.C. (sitting as a deputy judge of the Chancery Division) in Whirlpool Corp v Kenwood Ltd[2009] RPC 2 at [39].”
“In the end I felt that the evidence of the members of the public provided support for the view that there would be origin confusion if the Qualtex replica was sold in the way in which Qualtex threatened, even taking into account the way in which their evidence had first been obtained. The overall impression given by the evidence was that the replica prototype did convey quite a strong message that it was a genuine Henry, and that there was a real likelihood that at least some members of the public would buy it thinking it was a Henry. I have to say that this evidence confirms my own impression, for reasons which I explain below.”
“I ruled that it was survey evidence, but let it in in my discretion. I observed at the time that it did not seem strong evidence. Having heard all the evidence and submissions in this case I maintain that view. It proves, of course, that 11 members of the public were not confused, but Mr Bloch accepted that not all members of the public would be confused. We know that 11 people out of the 600 interviewed expressed that view. They were not selected because they held that view; they were “selected” as being the only people who, at the end of the day, went so far as to agree to give evidence in court. But they are only a small part of the number of people originally approached, and there is no indication of the views of the others. We do not know how representative they really are. All in all, therefore, this is evidence which does not help much as a piece of evidence by itself.”
“I reach this conclusion without needing to rely on any evidence of actual confusion, although a certain amount of such evidence was tendered by 32Red and I will consider it in the next section of this judgment. The test laid down by Art.9(1)(b) does not require evidence of actual confusion, and if such evidence is available it is likely to be of a confirmatory nature rather than an essential ingredient of the value judgment that, in the words of Jacob LJ in the Reed case, the court has to draw from all the circumstances.”
“(1) The court may control the evidence by giving directions as to – (a) the issues on which it requires evidence; (b) the nature of the evidence which it requires to decide those issues; and (c) the way in which the evidence is to be placed before the court. (2) The court may use its power under this rule to exclude evidence that would otherwise be admissible.”
“(1) The court must further the overriding objective by actively managing cases.”
“(h) considering whether the likely benefits of taking a particular step justify the cost of taking it”
“…neither party has permission to adduce survey evidence without first having obtained the leave of the Court. Any application for such leave is to include details of any questions proposed to be used in any such survey and details of the method and procedures proposed to be adopted in relation to the conduct thereof.”
“to avoid the spending of time and money on what is clearly irrelevant and unsatisfactory evidence.”
Showing the 50 most senior of 54.