Zee Entertainment Enterprises Ltd (A company incorporated under the laws of India) and Others v Zeebox Ltd
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss |
| Judgment Date | 07 June 2013 |
| Neutral Citation | [2013] EWHC 1644 (Ch) |
| Date | 07 June 2013 |
| Court | Chancery Division |
| Docket Number | Case No: HC 12 B 02679 |
[2013] EWHC 1644 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Birss
Case No: HC 12 B 02679
MR. SIMON MALYNICZ (of Ingram Winter Green Solicitors) appeared for the Claimants.
MR. PHILIP ROBERTS (instructed by Herbert Smith Freehills LLP) appeared for the Defendant.
Approved Judgment
Transcription by Marten Walsh Cherer Ltd., 1st Floor, Quality House, 5-9 Quality Court, Chancery Lane, London WC2A 1HP.DX 410 LDE Chancery Lane Tel No: 020 7067 2900. Fax No: 020 7831 6864 e-mail:
This is hearing of the Claimants' application for permission to adduce survey evidence in a trade mark and passing off case and for directions.
Zee TV is an Indian based satellite and cable television channel owned by the first claimant. It is based in Mumbai and broadcasts a wide range of programming in Hindi and other regional languages of India. Zee TV was launched in India on 1st October 1992, becoming India's first Hindi satellite channel.
Zee TV was launched in the United Kingdom in March 1995 and has broadcast continuously since that time. It has always been extremely popular with the UK's large South Asian population, say the claimants.
Current Zee channels that are available on, amongst other things, the Virgin and Sky platforms, are Zee TV, Zee Cine, Zee Cafe and Zee Punjabi. The family of Zee TV channel brands all make use of the word "Zee", as well as a large stylised Z device. Examples were given in evidence.
The second claimant generates turnover, which it says is significant, through the sale of advertising on the Zee channels. The claimants have a website at www.zeetv. com, which the claimants say is and has at all material times been accessed by large numbers of UK residents. The site contains video clips, details about television shows, a television schedule and various downloads. There is also a related Facebook page and a Twitter feed, both of which the claimants say are used by large numbers of social media users in the United Kingdom. In addition, the second claimant operates a UK targeted website at zeetv.co.uk, which carries similar content, including TV programming information as well as the ability to interact through Facebook and Twitter.
The defendant is a company incorporated in England in 2011. It was named Zeebox Limited in August 2011. In about November 2011 the defendant launched an app called Zeebox. The Zeebox app button and branding are all shown in the evidence. One example is:
Mr. Popat, who is giving evidence for the claimant, explains that the app is described in Apple's app store as follows:
"Use Zeebox while you watch TV. It's social, clever and fun. Zeebox helps you discover, connect, share and interact all live as you watch. Find out more about what is live on screen with our live Zee tags. Zeebox plus TV is magic."
Its features are described in the app store as follows:
"The best TV guide around: Remote control your connected TV, Sky + or TiVo box from your phone or iPad; Chat live during TV shows; Best of all it is a 100% absolutely, totally, free."
The Zeebox app is available free of charge to users of the iPad, the iPhone and Android smartphones. Mr. Popat also explains that he believes the app is being 'monetised' in a typical way for free apps, through advertising and click to buy models. It is also said to be available through a web interface to users of other devices such as laptop computers.
Proceedings were issued in the High Court in July 2012. The claimant's claim includes a claim for passing off arising from the claimant's extensive use, it says, of the word "Zee" and/or "Zee TV" and/or the "Z" device in the United Kingdom since 1995. The claimant also claims that the defendant has infringed its various trade marks. Some of the trade marks in this have been stayed under article 104, but some have not.
The defendant's answer to the passing off claim, in summary, is that neither the Z device nor the word "Zee" are distinctive of the claimants in the field of TV broadcasting. In addition, the defendant contends that no substantial number of members of the public will believe that the defendant's products or services are the claimant's products or services or connected in the course of trade with the same.
The claimant has done two pilot surveys and applies for leave to do a full survey and adduce the evidence as a result.
Before me on this application is Mr. Malynicz, instructed by Ingram Winter Green, appears for the claimant. Mr. Roberts, instructed by Herbert Smith, appears for the defendant.
The law.
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."
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."
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."
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."
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."
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 judge can always subsequently rule it inadmissible. He said:
"The objective of such an application is to have a definitive ruling one way or the other. It is a natural temptation for a judge who is not immersed in the case to leave questions of admissibility to trial. It is the temptation to which I succumbed in UK Channel Management Limited v E! Entertainment Television Incorporated. But balancing the cost of a survey (or witness collection exercise) against its likely utility, this temptation should be resisted."
The test to be applied is a cost benefit test (see paragraph 150 of Interflora 1):
"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. The reliability of the survey is likely to play an important part in that evaluation. Even then the court must be satisfied that the value justifies the cost. As Mr. Hobbs said, this requires the court to conduct a cost benefit analysis. In a case of trade mark infringement, in which the issue is one of deception in relation to the provision of ordinary consumer goods or services, these criteria are likely to be satisfied only in a special or unusual case."
Having dealt with paragraph 150, I will note that in this action it is the passing off case and not a trade mark case that I am being asked to adduce the survey in relation to.
The question of survey evidence returned to the Court of Appeal in a case referred to as Interflora 2, which is Interflora Inc. v Marks & Spencer [2013] EWCA Civ 319. Lewison LJ, at paragraphs 26 to 28, said as follows:
"26. With the benefit of hindsight, perhaps I did not make my message clear enough in Interflora 1. Let me say it again...
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