Not Pantone 280C

Comment

1. "Glen" is a Scottish term for "valley" and it is used in whisky brands from Scotland as a reference to the valley of origin of the product. All whisky brands distributed in the EU and that contain the term "Glen" originate from Scotland.
2. The protected GI "Scotch Whisky" contains an explicit reference to the geographical origin. The reference to Scotland can thus be equated to a reference to the GI "Scotch Whisky". There is no difference (from the consumer's point of view) between products under the GI "Scotch Whisky" and whisky from Scotland, given that "only Scotch Whisky can be manufactured in Scotland".
3. The association between "Glen" and the protected GI is not merely indirect. This is confirmed by survey evidence provided by the Plaintiff, by trademark registrations and court decisions of EU member states.
4. The product at stake (whisky) already creates an association with Scotland. Such association is reinforced by the use of the term "Glen". In this regard, it did not help that the defendant advertised "Glen Els" explicitly as a "homage to famous Scotch brands".
5. The term "Els" does not have any meaning and does not change the perception of the term "Glen" by the relevant public. The survey evidence provided by Plaintiff shows, inter alia, that 37% of respondents expect a specific geographical origin when seeing the term "Glen". The design and other elements on the bottles of "Glen Els" (which in part explicitly refer to the Harz region in Germany) are irrelevant, as explicitly stated in Art. 16(b) of the Spirits Regulation.

A Word on Survey Evidence

Glen Els, the morning after

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

Wait and Zee. Zee Entertainment Enterprises Ltd and others v Zeebox Ltd may not be the biggest and most important case to come before the Chancery Division of the High Court for England and Wales this year-- in fact it may be one of the least significant -- but it's an interim decision of the freshly-promoted Mr Justice Birss, upon whom all admiring eyes now rest.  There's no BAILII transcript (nor is there likely to be, since this an extempore decision), but the decision was noted on the excellent Lawtel subscription-only service this morning.

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.

According to Zee Entertainment, even if Zeebox's branding was not confusing for the whole of the population, it was legitimate for passing off purposes to look at whether it was confusing for a narrower group of people, such as British Asians. They also maintained that a full survey would be of real value as a means of discerning whether there was such confusion, and that those benefits justified the modest costs involved.

Referring to the recent outbreak of authoritative case law on survey evidence in Interflora v Marks & Spencer (noted by the IPKat here), Birss J refused the application.

This Kat prefers ZZZ to Zee

In the learned judge's view, it was obvious that the evidence sought to be adduced would not be all the evidence that Zee Entertainment would be relying on it 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.

Without knowing more about the facts on the ground, it is unfair to pass comment on this judgment. What can be said, however, is this: you have to have a jolly good reason for wanting survey evidence bedore you'll get it -- particularly where their probative value is likely to be low in the great order of things.  Merpel wants to know why British Asians should be regarded as particularly susceptible to confusion in this case. Can any British Asian reader enlighten her?

UK Channel Management Ltd v E! Entertainment Inc and another, found on the subscription-only LexisNexis Butterworth service, is a Chancery Division for England and Wales decision from Mr Justice Lewison last Thursday, 11 October 2007.

Channel owned several television channels in the United Kingdom, designated under the umbrella 'UKTV'. One such channel was designated 'UKTV Style'. A rival company, E!, proposed to launch a new television channel called 'The Style Network' in early 2008. Channel moved to prevent E! designating its channel as 'The Style Network' on the basis that to do so would either infringe its Community trade mark or constitute passing-off. In its supporting evidence Channel wanted to adduce various questionnaires, the first of which being an omnibus survey in which Channel had itself participated; the second questionnaire was specifically commissioned by Channel and the third was produced in response to E!'s criticisms of the second one. Would the court let Channel adduce this evidence?

Lewison J took an eclectic approach, ruling as follows:

* to let the omnibus survey be adduced was problematic, not least since Channel wasn't able to produce the questionnaires which were actually used or the instructions given to the interviewers. Even apart from that, it was of little evidential value. In those circumstances no leave would not be granted to adduce it;

* as for the second survey, its first question presupposed upon a situation that had was not the same as that of this dispute. This being so, E!'s objections were well founded and leave to adduce it would also be refused;

* the third survey was less objectionable. 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. In those circumstances, leave would be granted for its admission in evidence.

Right: the IPKat has always liked omnibuses, with or without surveys


The IPKat is always tantalised by these little notes. There's always something interesting floating around in them, but never quite enough information to make them useful. Merpel says, this decision does serve to remind everyone how cautious British courts are when it comes to admitting survey evidence.

Good style here