Dead -- or pining for the fjords? Zee survey is dead for sure

Are consumer surveys dead in England and Wales?  At last year's well-attended "Ask the Trade Mark Judges" session, jointly run by MARQUES and IBIL, Mr Justice Birss was asked whether, in the light of guidance from the Court of Appeal in Interflora v Marks & Spencer (noted by the IPKat here), if survey evidence was dead in trade mark litigation, an audience of several hundred people heard his answer -- though the social media can be guaranteed to give different slants on it.  "Dead" said the Managing Intellectual Property Blog, "pining for the fjords" said MARQUES Class 46.  Either way, the prospects of consumer surveys are not looking too good these days, and here's news of a further nail in the coffin of one proposed survey that has actually been dead for several months. Yes, it's the outcome of the appeal in Zee Entertainment Enterprises Ltd and others v Zeebox Ltd.

In June of last year, in posting a short note on this dispute when it came before the newly-promoted Mr Justice Birss, "Are British Asians More Likely to be Confused? Wait and Zee", this Kat summarised the facts of Zee Entertainment v Zeebox as follows.  Zee Entertainment objected to Zeebox's choice of name and logo for its app for mobile devices, including its use of "Zee" and "Zee TV". In particular, Zee Entertainment alleged that British Asians, who were most likely to be familiar with Zee Entertainment's services, would be confused by Zeebox''s choice of name and logo.

Having conducted two pilot surveys of British Asians, Zee Entertainment sought permission to carry out a full survey in order to corroborate their allegation that confusion was being caused.  Said Zee Entertainment, even if Zeebox's branding was not confusing for the whole of the population, it was legitimate for passing-off purposes to ask whether it was confusing for a narrower group of people, such as British Asians. What's more, a full-blooded survey would be of real value as a means of finding out whether there was such confusion.  The beneficial effect of the findings of the survey would, Zee Entertainment assured the court, easily justify the modest costs involved.

Referring to the then-recent outbreak of authoritative case law on survey evidence in Interflora v Marks & Spencer, Birss J refused the application. In his opinion it was obvious that the evidence sought from this survey would not be all the evidence that Zee Entertainment would be relying on in pressing its claim. At trial, it would be able to call evidence in support of its case, including further evidence to the effect that British Asians had been confused by Zeebox's branding. If that evidence to be called was not enough for Zee Entertainment to win its case, it was unlikely that the survey evidence it sought to adduce in this application would make any difference.  While the survey evidence might confirm what the trial judge decided on the basis of the other evidence, it was unlikely that it would be of real value so as to justify the substantial cost of obtaining it.

Zee Entertainment appealed. In its view, Birss J had refused to allow the full survey to take place because he had been so swayed by the merits of their case and that, in any event, the evidence obtained from such a survey would assist a trial judge who might be unfamiliar with the audience. However, last Friday, in an extempore decision which has escaped BAILII but -- like the earlier decision -- was picked up by subscription service Lawtel, the Court of Appeal (Lord Justice Elias together with intellectual property specialists Lords Justices Lewison and Floyd) dismissed Zee Entertainment's appeal.  In their Lordships' view

* whether survey evidence has value is a matter for the judge to determine, since it is for the judge to determine whether there was a passing off, i.e. a misrepresentation calculated to deceive. The "real value" criterion for permitting a survey was not intended as an invitation to the court to evaluate the likely outcome of an action at an interim stage.

* the survey was targeted at an artificial group ["So what?" says Merpel. The notion of the relevant consumer in European trade mark law, as well as the definition of the market in European competition law, are built on the definition of an artificial group, which is then given legal substance for purposes such as determining who is likely to be confused or exploited] and some of the questions prompted speculation. If the questions were flawed and invited speculation, they did not have value.

* The money spent on the survey was substantial especially as Zeebox was a start-up company. Given that Birss J appeared to have been influenced by his decision on the merits of Zee Entertainments case and on the issue of costs, the Court of Appeal would exercise its discretion and hold that the balance came down heavily in favour of refusing the survey evidence.

Lewison LJ added that the whole point of the Interflora rules was that a judge might need some additional information on whether there had been an infringement. Interflora did not invite a mini-trial on the strength of cases. The survey proposed by Zee Entertainment did not reflect the real world users and missed its target market. There was an element of speculation that was inherent in all surveys -- which is why they are now only admitted in special cases. Interflora showed that such surveys had limited value.

The dead parrot? Pining for the fjords?  Script and YouTube clip