Interflora Inc. (First Respondent) Interflora British Unit (Second Respondent(Claimants) v Marks & Spencer Plc (Appellant(Defendant)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Lewison,Sir Robin Jacob,Lord Justice Longmore |
| Judgment Date | 05 April 2013 |
| Neutral Citation | [2013] EWCA Civ 319 |
| Docket Number | Case No: A3/2013/0508 |
| Court | Court of Appeal (Civil Division) |
| Date | 05 April 2013 |
[2013] EWCA Civ 319
The Right Honourable Lord Justice Longmore
The Right Honourable Lord Justice Lewison
and
The Right Honourable Sir Robin Jacob
Case No: A3/2013/0508
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADEMARK COURT
THE HONOURABLE MR JUSTICE ARNOLD
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Geoffrey Hobbs QC and Ms Emma Himsworth QC (instructed by Osborne Clarke) for the Appellant
Mr Michael Silverleaf QC and Mr Simon Malynicz (instructed by Pinsent Masons LLP) for the Respondents
Hearing date: 22 March 2013
This is the latest battle in the long war of attrition between Interflora and Marks & Spencer ("M & S"). The background is set out in my judgment in an earlier battle at [2012] EWCA Civ 1501 [2013] ETMR 11 ("Interflora 1"). I will assume that anyone interested in this judgment either has or will read it. Suffice it to say that, M & S having successfully attacked the grant of permission to Interflora to adduce evidence from witnesses selected from a "witness selection programme," Interflora counterattacked by seeking and obtaining permission to call evidence from witnesses who, they say, give evidence of confusion in the real world. On 21 February 2013 Arnold J granted that permission. His decision is at [2013] EWHC 273 (Ch). Normally this court would regard that as a discretionary case management decision; but Kitchin LJ recognised that it raised a question of principle. For that reason we gave permission to appeal. Because the trial was due to begin in mid-April the appeal was expedited. At the conclusion of the argument we announced that the appeal would be allowed. These are my reasons for joining in that course.
Interflora compiled a list of over 100,000 people who had either bought flowers through Interflora's website or who had participated in a previous survey. From that potential pool of over 100,000 people, Interflora have managed to find 13 people who, they say, give evidence of real world confusion. It is the evidence of these 13 people on which Interfora wish to rely in support of their contention that the use of words such as "M & S Flowers" in an advertisement displayed as a sponsored link on a computer screen following a Google search for Interflora is insufficient to enable a reasonably well-informed and reasonably observant internet user to tell that the flower-delivery service offered by M & S does not originate from Interflora.
In Interflora 1 I quoted part of the decision of the CJEU at an earlier stage of the litigation. That court had said:
"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."
I also said (with the agreement of Hughes and Etherton LJJ) that the purpose of controlling evidence at the interim stage was:
"[70] … not merely to avoid irrelevant (i.e. inadmissible) evidence; it is also to avoid evidence which is unlikely to be of real value." (Emphasis added)
"[76] … But the remaining objections still hold good: viz. that the selected witnesses are not (or at least cannot be shown to be) a fair sample of the class of reasonably well-informed and reasonably observant internet users, with the consequence that there is no ground for any extrapolation on a statistical basis, or on the basis of any mathematical or logical probability, of the views of the selected witnesses as representing the effect of the M & S advertisement on the hypothetical reasonably well-informed and reasonably observant internet user. If evidence of this kind cannot form the basis for extrapolation on the basis of any mathematical or logical probability leading to a conclusion about the effect of M & S's advertisement on the hypothetical reasonably well-informed and reasonably observant internet user, then in the absence of special circumstances it cannot be useful. And if it cannot be useful, it should not be allowed to distract the focus of the trial even if it is technically admissible."
"[135] … Unless the court can be confident that the evidence of the selected witnesses can stand proxy for the persons or construct through whose perception the legal question is to be answered it simply represents the evidence of those individuals."
"[142] … even at an interim stage a judge who is asked for permission to adduce such evidence should evaluate it carefully in order to see (a) whether it would be of real utility and (b) whether the likely utility of the evidence justifies the costs involved." (Emphasis added)
"[143] … In the general run of cases it seems to me to place an undue and unfair burden on the other party for one party to tender in evidence witness statements from selected respondents to a questionnaire without even undertaking to produce a selection that demonstrates the full range of answers to the questions. As Mr Hobbs said, that places the burden on the defendant to disprove the validity of the selection, rather than on the claimant to validate it. Such a burden could in my judgment only be justified if the party tendering the evidence can show that it is likely to have a real impact on the outcome of the trial." (Emphasis added)
"[144] … The current practice… is to allow the evidence in unless the judge can be satisfied that it will be valueless. In my judgment that is the wrong way round. I consider that, even if the evidence is technically admissible, the judge should not let it in unless (a) satisfied that it would be valuable and (b) that the likely utility of the evidence justifies the costs involved."
"[146] In the present case I do not consider that Interflora has demonstrated that the evidence it wishes to call would be of real value. To put it bluntly, Interflora starts with an unreliable dataset from which it proposes to select the witnesses most favourable to itself. (Emphasis added)
[150] In deciding whether to give permission, the court must evaluate the results of whatever material is placed before it. Only if the court is satisfied that the evidence is likely to be of real value should permission be given." (Emphasis added)
Mr Hobbs QC rightly said that this judgment was intended to send the general message that evidence from consumers in this kind of case (i.e. trade mark infringement involving ordinary consumer goods or services) should only be admitted if it is of real value; and even then only if the value justifies the cost; and that judges should be robust gatekeepers in that respect.
In Interflora 1 I had also said that "different considerations may come into play where … [e]vidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement"; and that "if there is evidence of consumers who have been confused in the real world, there can be no objection to calling it." This appeal engages that aspect of Interflora 1.
The judge described the way in which the witnesses were identified. I need not repeat it. Once witnesses had agreed to participate in court proceedings, they were telephoned by solicitors representing Interflora who questioned them according to a script. Having noted their answers to the scripted questions, the solicitors then prepared witness statements which the witnesses signed. The three most relevant questions were:
"[26] What did you think when you saw M & S when you entered the search term "Interflora"?"
"[27] Why do you say that?"
"[28] From your memory of these search results, what, if anything, do you think the results tell you about any relationship between Interflora and M & S?"
Question [28] was to be asked only if the interviewee had not mentioned any connection between Interflora and M & S.
It is instructive to compare the raw answers to the questions with what ended up in the witness statements. The following table sets out the answers to those questions and the corresponding part of the witness statement. I have designated the witnesses by their initials; and have also indicated the question to which the answers were given.
| Witness | Answer | Witness statement |
| (1) CRJ | [26] M & S is not Interflora… [28] You might think that there is a relationship. They offer similar things. No relationship. I can't really see it but other people might. Nothing in the search results. | Other things always come up when you search for "Interflora".. You get the official Interflora site and... |
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