The Monty Python team, or at least what remains of them, have recently done a series of sold out shows in London and of course included their famous “dead parrot” sketch. By coincidence a recent decision suggests that survey evidence in trade mark actions which many thought was a dead parrot has perhaps a squawk of life left in it yet. The case in question was Enterprise Holdings v Europcar Group UK Limited & Another  EWHC 2498 [CH] where the judge allowed survey evidence which proposed to demonstrate that the claimant’s mark had acquired “enhanced distinctiveness” and is identified with the goodwill of the business, to support the claim of passing-off against the defendants, Europcar.
Survey evidence used to establish the likelihood of confusion or actual confusion became popular in the 80’s and perhaps reached its zenith in the Jif Lemon case, a leading decision of the House of Lords on passing off, more properly identified as Reckitt & Colman Ltd v Borden Inc  All E.R. 873. In that case Reckitt was successful in preventing Borden from selling lemon juice in a lemon-shaped plastic container quite largely as a result of the survey evidence Reckitt obtained as to the reputation of their own lemon shaped container for lemon juice, the survey showing that a large proportion of the public would associate any lemon shaped container with Jif and so Reckitt.
However, the pendulum then swung gradually the other way and survey evidence has since been subject to increasing criticism. In a series of decisions, including a number in the last 12 months or so, the UK Courts have given a strong indication that survey evidence will not be allowed in most cases, particularly trade mark infringement actions where it is the judge who must reach a view of likelihood of confusion.
However, in Enterprise v Europcar the judge held that survey evidence may be helpful in assisting the judge on a question of fact. Indeed the judge was modest enough to give as one reason that a judge might otherwise be forced into an anachronistic decision!
If a survey is desired, there is a massive cost owing to the requirement of a pilot survey to demonstrate the potential for the full survey, bringing an application to introduce the survey and then actually carrying out the survey itself.
However, the potential value of the survey in this case can be seen from the fact that Europcar (the defendant) spent over £100,000 resisting a survey whereas they estimated the cost of reviewing and responding to the survey to be £99,000. So Europcar was prepared to spend more in resisting the introduction of the survey than it would have done simply dealing with the results.
Clearly this is a hard-fought case and it will be interesting to see the outcome of the survey and whether it influences the final decision.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.