Zee Entertainment Enterprises Ltd (a company incorporated under the laws of India) and Others (Claimants/ Appellants) v Zeebox Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Lewison,Lord Justice Elias |
| Judgment Date | 24 January 2014 |
| Neutral Citation | [2014] EWCA Civ 82 |
| Docket Number | Case No: A3/2013/1773 |
| Court | Court of Appeal (Civil Division) |
| Date | 24 January 2014 |
[2014] EWCA Civ 82
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURTOF JUSTICE
CHANCERY DIVISION, INTELLECTUAL PROPERTY
THE HONOURABLE MR. JUSTICE MANN
HC12 B02670
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Elias
Lord Justice Lewison
and
Lord Justice Floyd
Case No: A3/2013/1773
MR. SIMON MALYNICZ (instructed by Ingram Winter Green LLP) appeared for the Claimants/Appellants.
MR. PHILIP ROBERTS (instructed by Herbert Smith Freehills LLP) appeared for the Defendant/Respondent.
(As Approved)
This is an appeal from the judgment and order of Birss J in a passing off and trade mark infringement action. By his order of 7th June 2013, the judge refused permission to the appellants to carry out a market research survey in support of their allegation of passing off.
The appeal involves the application of the principles and guidance given by this court about the approach to the evidence of surveys, and evidence derived from surveys, in two recent cases Marks and Spencer v Interflora Incorporated [2012] EWCA (Civ) 1501 and Marks and Spencer v Interflora Incorporated [2013] EWCA (Civ) 319: (" Interflora 1" and " Interflora 2").
Zee TV is a satellite and cable television channel. Broadcasting from India, it provides a wide range of programming in Hindi and other regional Indian languages. It launched its services in the United Kingdom in 1995, targeting its service at the United Kingdom's Asian population. Its current channels are Zee TV, Zee Cine, Zee Cafe and Zee Punjabi. In addition to making use of the word "Zee", all these channels make use of a large stylised "Z" device with the words "Zee TV" beneath.
Information about the appellants' services is provided on its Indian and UK websites. The websites contain video clips, details about programmes, a schedule and various downloadable items. The UK website includes the ability to interact via Facebook and Twitter. The appellants claim to have built up a significant reputation and goodwill in the name Zee TV and its device.
In November 2011, the respondent launched an app. An app (which is short for application) is a small computer program which can be installed on smartphones and tablet devices. The app is marketed under the name "Zeebox". The icon which appears on a smartphone is a "Z" with the word Zeebox underneath. The Zeebox app is designed to be used while the user is watching television on another device. It provides a means for discovering more about programmes while they are being watched. It includes a TV guide, the ability to remote-control a connected television or other device from a phone or tablet, and the ability to chat live during TV programmes. It is available free of charge, but makes money by advertising.
The app does not itself enable users to watch or record TV. The aim of the app is to make watching TV a more social experience. One example of the Zeebox branding appears in the judgment of the learned judge at paragraph 6 and is reproduced below:
The appellants claim that the respondent, by use of the word "Zeebox" and the "Z" device, are committing the tort of passing off. The respondent denies that the word or device is distinctive of the appellants and denies that a substantial number of members of the public will believe that their products and services are connected in the course of trade with the appellants or their services. The respondent relies heavily on the fact that here has not been any recorded instance of actual confusion or deception to date.
The pilot survey
In September 2012, the appellants carried out a pilot survey, Pilot 1, which was objected to by the respondent on various grounds. In response to the criticisms, on 23rd May 2013, the appellants commissioned a further pilot, Pilot 2, intended to deal with the respondent's objections to Pilot 1. It was carried out on 27th and 28th May, only a few days before the hearing before Birss J.
Both surveys were carried out by an independent market research organisation, BDRC Continental. They were intended to target what were described as "British Asian people". Members of the public were interviewed in the street at locations in London for the first pilot and in Birmingham, Leicester and Manchester for the second pilot. Only 60 or so interviewees were included in the two pilots, it being intended to expand the number to around 500 if a full survey were to be permitted. The respondent was provided with all the survey materials generated by the pilots, including the questionnaires.
The respondents in the survey were first filtered in various ways. Questions 5 and 6 then restricted respondents to those who regularly use a smartphone or tablet. The key questions were questions 7-9. These were: " This is the name of an app relating to TV [or website relating to TV]. What can you tell me about it?" The precise question asked depended upon the results of the filtering. When being asked this question, the respondent was shown a card with the Zeebox logo and the word "Zeebox" underneath. The show card appears at page 159 of the appeal bundle and is reproduced below:
Question 10 read: " Who do you think is responsible for Zeebox?" Later questions investigated, with prompting, the types of TV the household received, which Asian TV channels they were aware of, their preparedness to be contacted and their ethnicity.
The appellants considered the results to be encouraging. By their original application, they envisaged calling not only evidence about the survey itself, supported by expert evidence, but in due course witnesses of fact from amongst the persons interviewed. In the course of his submissions before us, Mr. Malynicz, who appeared on behalf of the appellants, has indicated that the appellants do not now propose to call any such factual witnesses if the survey is admitted. This is a difference from the basis on which the judge considered the application.
The law as to permission to adduce survey evidence: the real value test .
The judge summarised the law as to the grant of permission to adduce survey evidence, in terms which neither side disputed, at paragraphs 14-28 of his judgment:
"The law.
"14. Imperial Group PLC v Phillip Morris [1984] RPC 293 was the starting point for the modern approach to the admission of survey evidence in cases of trade mark infringement and passing off. In that case Whitford J laid down guidelines for the future conduct of surveys, which have since become known as the Whitford Guidelines. The Whitford Guidelines were recently summarised by Lewison LJ in Marks & Spencer v Interflora Incorporated [2012] EWCA Civ 1501, which I will refer to as Interflora 1. At paragraph 61 Lewison LJ said the following:
"(i) If a survey is to have any validity at all, the way in which the interviewees are selected must be established as being done by a method, such that a relevant cross section of the public is interviewed;
"(ii) any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis;
"(iii) the party relying on the survey must give the fullest possible disclosure of exactly how many surveys they have carried out, exactly how those surveys were conducted and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents;
"(iv) the questions asked must not be leading and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
"(v) exact answers and not some sort of abbreviation or digest of the exact answer must be recorded;
"(vi) the totality of all answers given to all surveys should be disclosed;
"(vii) the instructions given to the interviews must also be disclosed."
"15. Lewison LJ, in Interflora 1, also said:
"Evidence that is not useful should not be allowed to distract the focus of a trial, even if it is technically admissible."
"16. He indicated that surveys that are not fully compliant with the Whitford Guidelines are one example. At paragraph 21 he said:
"The value of the evidence is severely diminished if not eliminated by a failure to follow the Whitford Guidelines."
"17. In Interflora 1 Lewison LJ summarised that the standard practice in trade mark and passing off cases in future should be as follows:
"(i) A party may conduct a true pilot survey without permission, but at its own risk as to costs;
"(ii) no further survey may be conducted or adduced in evidence without the court's permission;
"(iii) no party may adduce evidence from respondents to any survey without the court's permission."
18. Then, at paragraph 151:
"When applying for permission, as referred to in subparagraph 2 above, the applicant should provide the court with:
"(i) the results of any pilot survey;
"(ii) evidence that any further survey will comply with the Whitford guidelines;
"(iii) the cost of carrying out the pilot survey and the estimated cost of carrying out the further survey."
"19. At paragraph 147 of Interflora 1 Lewison LJ explained that such a procedure provides the court with the material it needs to rule definitively on whether the cost of the full survey should be undertaken. It would be a false kindness simply to permit the survey to go ahead on the basis that the trial...
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