Admissibility – Evidence of actual confusion – Claimant companies commencing proceedings against defendant companies for trademark infringement

Interflora Inc and another company v Marks and Spencer plc: Court of Appeal, Civil Division: 5 April 2013

The instant hearing was the latest in a long legal battle between the parties regarding the defendant company alleged infringement of the claimant companies' community trademark. In February 2013, the claimants succeeded in their application to adduce evidence from witnesses who, they said, would give evidence of confusion in the real world. The evidence comprised of witness statements based on answers given by the witnesses to questions they had been asked as part of a questionnaire. The defendant appealed.

The defendant submitted that the judge had erred in concluding that the evidence was admissible. Consideration was given to the earlier judgment of the Court of Appeal, Civil Division, in Interflora Inc & another v Marks & Spencer [2012] All ER (D) 228 (Nov). The appeal would be allowed.

A judge should not let in evidence of the kind in the instant case unless the party seeking to call that evidence satisfied the judge: (a) that it was likely to be of REAL value; and (b) that the likely value of the evidence justified the cost (see [26] of the judgment).

In the instant case, the judge had been misled by the impression created by the witness statements when compared to the raw data on which they were based. The judge had left it to the defendant to amplify the range of responses from the questionnaire, and accordingly, imposed on it the burden of disproving the validity of the selection of witnesses. The judge should have asked himself whether the evidence was likely to be of real value. On the facts, he had conducted a flawed analysis of the nature of the application, the quality of the raw data that supported the witness statements, and ultimately applied too lax a test (see [15], [18], [27], [28], [32], [34] of the judgment). Interflora Inc v Marks and Spencer plc [2012] All ER (D) 228 (Nov) applied. Decision of Arnold J [2013] All ER (D) 273 (Feb) reversed.

Michael Silverleaf QC and Simon Malynicz (instructed by Pinsent Masons LLP) for the claimants; Geoffrey Hobbs QC and Emma Himsworth QC (instructed by Osborne Clarke) for the defendant.