A & E Television Networks LLC v Aetn UK and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mann |
| Judgment Date | 20 April 2011 |
| Neutral Citation | [2011] EWHC 1038 (Ch) |
| Court | Chancery Division |
| Date | 20 April 2011 |
| Docket Number | Case No: HC10C013615 |
[2011] EWHC 1038 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
COMPANIES COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Mann
Case No: HC10C013615
and
James Mellor QC (instructed by SNR Denton UK LLP) for the Claimants
John Baldwin QC and Charlotte May (instructed by Burges Salmon LLP) for the Defendant
Hearing date: Friday 8th April 2011
Introduction
This judgment deals with one of the issues that has arisen in a case management conference and relates to the extent to which the court should give permission for a survey to be conducted, and for evidence resulting from previous surveys to be admitted.
The action is one for trade mark infringement and passing off. The claimants have for years broadcast a cable and satellite channel called The History Channel, renamed History in 2008. It has a subsidiary channel called Military History. It has trade marks for "The History Channel" and "History" as device and word marks.
The defendant is the broadcaster of the Discovery channels in the UK. One of its associated channels used to be known as Discovery Knowledge, but on 7 th October 2010 it announced it would change the name of that channel to Discovery History, started advertising it to the public on 24 th October, and started broadcasting under that name (in place of its old name) on 7 th November.
The claimants say that in so doing the defendant is guilty of trade mark infringement and passing off, and has commenced this action to enforce its claims. Among the issues that arise are issues as to confusion, unfair advantage and likelihood of deception. In order to make good its case on these points it seeks to conduct a survey and seeks to rely on pilot surveys that have already been conducted. In accordance with practices now established in the authorities, it applies for certain permissions and liberties in that connection.
The jurisdiction and principles to be applied
It is common for parties to actions such as this to seek to introduce survey evidence, and that evidence is invariably expensive and time-consuming, and quite often not particularly probative because of the manner in which it was conducted, or the questions asked, or both. Accordingly the courts have, as a matter of practice, required leave to be sought before such evidence is adduced. As Arden LJ said in esure Insurance v Direct Line Insurance [2009] IP & T 706:
"Secondly, 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. There is much to be said for the practice initiated by the late Pumfrey J (as he then was) in O2 Ltd v Hutchison 3G UK Ltd [2004] EWHC 2571 (Ch)… and subsequently followed by Rimer J in UK Channel Management Ltd v E! Entertainment Television In [2008] FST 120. Under this practice, case management directions are given at an interim stage requiring the parties to seek the directions of the court as to the scope or methodology of any proposed consumer survey that the parties may desire to put in evidence at trial. Those directions can then be given in advance of the trial …" (para. 63).
This was adopted by Rimer LJ at para. 78, where he went on to say:
"I would only add that even where the practice has been followed, so that the questions and methodology are settled with the agreement of the court in advance, it may be that things will go wrong. Experience of polls shows that they can be conducted in a slipshod manner, so one would need to examine the detail. And even the unexpected can happen – a question which one thought in advance was clear, may turn out not to have been so when the polls has been conducted. And a question which one thought was non-leading, may turn out to be so or to have caused the pollees to speculate in a way which they would not have done but for the question itself."
The justification for the practice was elaborated in Rimer J's decision in UK Channel Management where he said:
"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."
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).
The points raised in paragraph 8 above can be demonstrated from what actually happened in the UK Channel Management case itself before Lewison J [2007] EWHC 2339 Civ. There were 3 surveys. The first was an "omnibus" survey, which was not directly focussed on the marks in question but was commissioned by many clients. The actual questions and answers were not going to be available to be put in evidence (see para. 7 of the judgment), and it was going to require an expert to interpret the survey. In relation to this survey the court was invoking its jurisdiction to control expert evidence. The survey was intended to prove "acquired distinctiveness", of which there was apparently rather better evidence (para. 7). Lewison J came to the conclusion:
"In my judgment the omnibus survey is of such little value that it is not worth the time and effort that would be expended in considering it. I therefore rule that the omnibus survey is not to be adduced in evidence."
It was therefore ruled out as being insufficiently probative in the circumstances.
The second survey ("Malivoire 1") suffered from a "thoroughly misleading question", which "got the survey off on the wrong foot" (para. 11). Rimer J had previously ordered that the questions being put to the public be disclosed to the defendant and that the defendant inform the claimants whether it agreed with the appropriateness of the question or not, and it seems that the survey had been completed, without the benefit of a further court ruling, by the time of the hearing before Lewison J. He ruled that the survey was not admissible in evidence, because of the misleading questions. He also excluded the possibility of live (or perhaps written) witness evidence coming from it because:
"the witnesses produced as a result of a misleading survey are likely to give misleading and tainted evidence through no fault of their own" (para. 12)
The court was therefore ruling in advance that the evidence would be inadmissible as being of no probative value, and that the court could determine the question at that stage even in advance of seeing the actual evidence that the witness was going to give.
The third survey ("Malivoire 2") was apparently more balanced and there was less objection to it (see para. 14). Lewison J was sceptical about its value but did not feel confident enough that it "proves nothing" and did not rule it out; he left it to the trial judge. That illustrates my proposition (v) above.
The court must, however, be alive to the dangers of the pre-trial assessment exercise, in that the permission hearings themselves may give rise to another raft of costs in what is already likely to be a costly exercise. The case before me is a case in point. The application before me was one direct to the judge (it was not an appeal from the Master). There was a leader on one side, and a leader and junior on the other. The two leaders gave me estimates of the costs involved in the CMC so far as they related to the survey evidence point (the CMC raised other points which are...
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