Interflora Inc. v Marks & Spencer Plc
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 21 February 2013 |
| Neutral Citation | [2013] EWHC 273 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC08C03440 |
| Date | 21 February 2013 |
[2013] EWHC 273 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Arnold
Case No: HC08C03440
Michael Silverleaf Q.C. and Simon Malynicz (instructed by Pinsent Masons LLP) for the Claimants
Geoffrey Hobbs Q.C. and Emma HimsworthQ.C. (instructed by Osborne Clarke) for the First Defendant
Hearing date: 14 February 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE HON Mr Justice Arnold
Introduction
The Claimants ("Interflora") seek the permission of the Court to adduce in evidence the witness statements of 13 witnesses at the trial of this action scheduled for mid April 2013. Interflora do not accept that they need the Court's permission, but they have sought it out of an abundance of caution. Having regard to the previous history, that was a sensible approach to adopt. As Interflora rightly anticipated, the First Defendant ("Marks & Spencer") contends that permission is required and should be refused.
Background
The general background to the matter is set out in a number of previous judgments of mine in this case and in the recent judgment of the Court of Appeal [2012] EWCA Civ 1501, [2013] ETMR 11 at [3]–[12]. I shall not repeat it again. For present purposes it suffices to say that Interflora allege that Marks & Spencer has infringed their United Kingdom and Community trade marks for the word INTERFLORA by ensuring that advertisements for Marks & Spencer's flowers are displayed when consumers search for "interflora" (and similar terms) using Google.
Interflora allege infringement pursuant to Article 5(1)(a) and 5(2) of what is now European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive") and Article 9(1)(a) and (c) of what is now Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) ("the Regulation"). Interflora's primary case under Article 5(1)(a) of the Directive and Article 9(1)(a) of the Regulation is that Marks & Spencer's advertisements do not enable reasonably well-informed and reasonably observant internet users, or enable them only with difficulty, to ascertain whether the goods and services referred to in the advertisement originate from Interflora, or an undertaking economically connected to it, or on the contrary emanate from a third party. In particular, Interflora contend that some users wrongly think that there is a trade connection between Marks & Spencer and Interflora, for example that Marks & Spencer is part of the Interflora network.
The application concerning the "pilot surveys"
The Court of Appeal's judgement concerned an application by Interflora for permission to adduce the evidence of witnesses who had been identified by means of two exercises which Interflora described as "pilot surveys". Interflora did not intend to rely on the "pilot surveys" themselves, which Interflora accepted were not statistically reliable. Nor did Interflora intend to repeat those surveys on a larger scale.
Lewison LJ described the first exercise in his judgment at [15] as follows:
"… Respondents were recruited on the street and were first asked a number of screening questions. Three of these questions were whether the potential respondents had purchased or looked into the purchase of flowers in the previous two to three years; whether they had undertaken activities on the internet but were not confident about creating a web page; and whether they were in a position to read a computer screen. Some 95 respondents passed the screening test, and were chosen to answer further questions. They were brought into a hall set up with four laptop computers. Each participant was asked to type the word 'Interflora' into the search box on the Google homepage. It was not a real Google search, because each computer was set up so as to display one of the search results pages which are the subject of this litigation. The search results page brought up Interflora, both as a natural or organic result and also as a sponsored link. The search results page also brought up an M & S sponsored link, quoted above, together with other sponsored links. Participants were then invited to scroll up and down the page and to tell the interviewer when they were ready to answer questions. Once ready each participant was asked a series of structured questions. These questions were changed during the course of the survey. The questions did not distinguish between natural or organic results on the one hand and sponsored links on the other. The questions were framed generically by reference to 'results' or 'search results'. … In the first survey [question 6] was posed as follows:
'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?'"
The second exercise was carried out using broadly the same methodology, but question 6 was different.
Interflora wished to adduce evidence from selected participants in the two exercises: in essence, those who had given answers favourable to Interflora's case and were agreeable to being called as witnesses. Interflora accepted that they needed permission to adduce this evidence as a result of an order I had made on 24 February 2012. Marks & Spencer resisted the grant of permission. I gave Interflora permission to call witnesses identified as a result of the first exercise, but not as a result of the second exercise: [2012] EWHC 1722 (Ch), [2012] FSR 32. I gave Marks & Spencer permission to appeal on the basis that the matter raised an important question of principle as to the correct approach to such applications. Interflora was granted permission to cross-appeal by Lloyd LJ. Marks & Spencer's appeal was allowed and Interflora's cross-appeal was dismissed. Shortly before the hearing of the present application the Supreme Court refused Interflora permission to appeal against the Court of Appeal's decision.
In his judgment, with which Etherton LJ (as he then was) and Hughes LJ agreed, Lewison LJ considered two objections to Interflora's application raised by Marks & Spencer which he described as the macro objection and the micro objection.
The macro objection
Lewison LJ summarised the macro objection at [24] as follows:
"Mr Hobbs' macro objection is that the court should not permit evidence to be adduced from witnesses selected as a result of a survey unless the survey itself is statistically reliable. It does not matter whether such evidence is technically admissible, because the court has power under CPR 32.1 (2) to exclude evidence that is otherwise admissible. The argument runs thus:
i) The question at issue is whether the reasonably well-informed and reasonably observant internet user would or would not understand the M & S advertisement to indicate that M & S was part of the Interflora network.
ii) The reasonably well-informed and reasonably observant internet user is not a real person. He or she is a legal construct. As the Court of Justice made clear, 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.
iii) Accordingly, simply to call some internet users to give evidence is not probative of the issue in the case.
iv) That evidence can only be probative if those who are called can in some way be seen to stand proxy for the legal construct through whose eyes the essential question must be judged.
v) Unless the survey used for witness collection is itself a reliable survey, the court will have no means of knowing whether the selected witnesses can be treated as reliable proxies for this legal construct. The problem is compounded where, as here, the party calling the witnesses is permitted to select those who give most support to its case.
vi) Even if the evidence of such witnesses is, in principle, admissible, it is likely to be of such marginal utility and so expensive and time consuming to collect, analyse and deal with in court, that the court ought to exclude it in exercise of its powers under CPR Part 1.4 (2) (h) and CPR Part 32.1."
Lewison LJ accepted this argument for the reasons he gave at [26]–[146]. His reasoning may be summarised as follows.
First, he started from the proposition that the "average consumer" and the "reasonably well-informed and reasonably observant internet user" (who are the same in the circumstances of this case) were legal constructs like the person skilled in the art (patents) and the informed user (designs): see in particular [13], [37]–[44], [73]. In this connection he made a distinction between trade mark cases and passing off cases: see in particular [33]–[34].
Secondly, he emphasised that the question to be decided was a qualitative assessment: see in particular [34]–[36].
Thirdly, he held that the results thrown up by search engines on the internet fall within the general description of ordinary consumer services in relation to which the judge could make up his or her own mind without the need either for expert evidence or the evidence of consumers: see in particular [46]–[50] and [56]–[59].
Fourthly, he accepted that properly conducted and statistically reliable consumer surveys may be of evidential assistance in some trade mark...
To continue reading
Request your trial
-
Interflora Inc. (First Respondent) Interflora British Unit (Second Respondent(Claimants) v Marks & Spencer Plc (Appellant(Defendant)
...FROM THE HIGH COURT OF JUSTICE CHANCERY DIVISION INTELLECTUAL PROPERTY COMMUNITY TRADEMARK COURT THE HONOURABLE MR JUSTICE ARNOLD [2013] EWHC 273 (Ch) Royal Courts of Justice Strand, London, WC2A 2LL (Transcript of the Handed Down Judgment of WordWave International Limited A Merrill Communi......
-
Eli Lilly and Company Ltd v Human Genome Sciences Inc. (No 2)
...... This is an action for passing off and for infringement of two registered Community trade marks (CTMs) and two UK registered trade marks (UKTMs) for the mark 'SKY' by which the Claimants seek to ... research projects for legal purposes and was involved in the surveys carried on in the Interflora litigation to which I shall refer. He now runs his own market research consultancy business. . ...He said at [43]: 'Counsel for Marks & Spencer complained that no statements had been obtained from those 24, but I see no need for Interflora ......
-
Interflora Inc. (a company incorporated under the laws of Michigan, United States) and Another v Marks and Spencer Plc
...2012. Arnold J was again persuaded that permission should be given for reasons he gave in his judgment given on 21 February 2013 ( [2013] EWHC 273 (Ch)). However, once more, an appeal against his order was allowed by this court ( [2013] EWCA Civ 319, [2013] FSR 26 (" Interflora (CA II)"))......
-
Combe International LLC (A company incorporated under the laws of the State of Delaware, USA) v Dr August Wolff GmbH & Company KG Arzneimittel (A company incorporated under the laws of Germany)
...survey evidence, and permission is usually required to rely on it: see, e.g., Interflora, Inc & Anor v. Marks & Spencer PLC and Anor [2013] EWHC 273 (Ch). No such permission had been sought or given 117 As I understood it, however, that particular point was later abandoned because, as I wi......
-
IP Bulletin - April 2013
...instead have asked himself whether the evidence was of real value. Interflora Inc and another v Marks and Spencer plc and another [2013] EWHC 273 (Ch), 21 February Interflora Inc & another v Marks & Spencer plc [2013] EWCA Civ 319, 5 April 2013 Background The claimant Interflora Inc......
-
The Consumer as the Empirical Measure of Trade Mark Law
...[137].35 This evidence-gathering exercise together with Marks and Spencer’s costs totalled £173,000:Interflora Inc vMarks & Spencer Plc [2013] EWHC 273 (Ch). Although a large figure, thisrepresented less than five per cent of the total litigation costs: although the costs of arguing aboutadmis......