England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		Royal Courts of Justice Strand. London. WC2A 2LL
		10th October 2007

MR. JUSTICE LEWISON:

1. UK Channel Management Limited is the owner of a number of channels which are shown on television in the United Kingdom and are designated by the letters UKTV. One of those channels is UKTV STYLE which operates in two forms: UKTV STYLE itself and UKTV STYLE PLUS ONE which I infer contains the same programmes but broadcast one hour later. The defendant E! Entertainment Television Inc. proposes to launch a new television channel early in 2008 under the name THE STYLE NETWORK. UK Channel Management Limited brings this action in order to prevent that launch claiming that the use of the name THE STYLE NETWORK to designate the new channel will both infringe its registered Community trade mark and will also amount to passing off. The Community trade mark is a graphic representation of UKTV STYLE although as Mr. Hobbs QC, who appears for the defendants, points out, the "K" is elided into the "U" so that it is figurative rather than simply a word mark.
2. The claimant has participated in what is called an omnibus survey. An omnibus survey is a survey carried out on behalf of many clients who pay a market research organisation to include questions in a survey. It was the intention of the claimant to rely upon the results of that survey and the question of survey evidence came before Rimer J on 6^th September this year. At that stage the omnibus survey had been carried out and the claimant was also in the process of carrying out another survey which has been designated "Malivoire 1" in the current application in deference to Mr. Malivoire, the claimant's expert.
3. Rimer J, having considered the question of evidence said this:

"×. I have come to the view that the claimant ought not to be at liberty to call any expert evidence from its polling organisation as to the basis of the completed and current surveys without the prior leave of the court."

The "completed" survey, to which Rimer J refers is the omnibus survey and the "current" survey is what I call Malivoire 1. Rimer continued:

"As regards the first survey, Mr. Mitcheson is not asking here and now that leave be refused. His position is that if the claimant wishes to rely on the fruit of that survey, the claimant must obtain leave to adduce any expert evidence explaining it. Of course the questions put to the public in that survey have been put without the prior leave of the court but Mr. Mitcheson is not suggesting that that will automatically rule the survey out of court. All that he is submitting, and I agree, is that the claimant should make an application to the court with regard to the adducing of expert evidence in relation to that first survey and the defendants will then deal with that application on its merits.

12. As regards the current survey, I propose to direct that within seven days of today the claimant disclose to the defendants the questions being put to those being canvassed and that, within 14 days thereafter, the defendants must make their response to the claimant as to whether or not, or to what extent, they agree with the appropriateness of the questions. I direct that the claimant may also only adduce expert evidence in relation to that survey with the prior leave of the court. I will further direct that the claimant must, by no later than 2^nd October 2007, issue an application notice returnable before the applications judge for directions with regard to the adducing at the trial of any expert evidence upon which it wishes to rely."

4. There are now before the court three surveys in issue. The first is the omnibus survey, the second is Malivoire 1 and the third, which has been prepared in response to certain criticisms levelled by the defendant at Malivoire 1, has been designated Malivoire 2.
5. In his witness statement in support of the application, Mr. Simon Baggs, who has the conduct of the proceedings on behalf of the claimant, says that the claimant intends to rely on the results of the first element of the omnibus survey as evidence of fact in relation to evidence of "acquired distinctiveness". He continued in paragraph 17 that the claimant did not seek to rely on the second element of the omnibus survey as it had conducted Malivoire 1 regarding likelihood of confusion nor, he said, did the claimant wish to adduce expert evidence with regard to the omnibus survey.
6. Rimer J, as I read his judgment, contemplated that expert evidence would be required if the omnibus survey were to be placed before the court. Although Mr. Baldwin QC, who appeared for the claimant, did say that Mr. Malivoire could adduce expert evidence on the omnibus survey, that is not the position that was advanced on the making of this application. Moreover, Mr. Baldwin said that contrary to what Mr. Baggs has said in his witness statement, the real reason why the claimant wished to rely on the omnibus survey was to establish reputation both in the mark and in the goodwill attaching to the name.
7. The evidence of Ms. Pappenheim is replete with information about the reputation of the name and although there may be a formal denial on the pleadings, it is merely a formal denial. There are far better ways of establishing the reputation and goodwill of a business and/or a mark than the adduction in evidence of an omnibus survey. Moreover, the omnibus survey suffers from a number of evidential difficulties. Because the claimant was not the sole person who paid for questions to be asked, the claimant cannot produce the questionnaire, cannot produce the instructions to interviewers and does not have the answers given by the interviewees.
8. 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.
9. The next survey is Malivoire 1. The questionnaire used in the partial conduct of that survey and its future conduct, after a few screening questions, opens with the question: "Have you heard of this television channel?" The "this" referred to in the question is a colour show card showing the defendants' logo, THE STYLE NETWORK. The word "STYLE" itself is in a particularly distinctive font which has already featured in the programme credits to programmes that have been broadcast within the European Union including programmes broadcast on the claimant's channel itself.
10. Mr. Hobbs' fundamental objection to the question is that it does not fairly reflect the situation in which the parties find themselves. The question presupposes that there is a television channel of which the respondents to the questionnaire will assume that they have access to. In fact, as Mr. Malivoire makes clear in his witness statement, it is likely that the respondents will not have seen the defendants' logo or have had access to the defendants' channel. Mr. Malivoire explains the rationale behind the questions in paragraphs 25 to 27 of his witness statement as follows:

"25. The survey questions were designed in such a way as to obtain the likely reaction to someone when they see the proposed logo for The Style Network. We realise that the defendants' channel is as yet unavailable in Great Britain, although it is obviously available in USA and there is a website that people may have visited. On balance, we assumed for the purposes of the survey that very few people have been exposed to the defendants' logo. However, in order to obtain people's likely reactions to the logo, we needed to design a form of questioning that was as natural and non-leading as possible. In designing the questions, we needed to consider two key points: how the logo would be introduced and what questions to ask. I will address each point in turn.

26. I believe that it was important to introduce the logo in as neutral a way as possible. To introduce it in terms of a logo for a prospective TV channel would render any further questioning redundant as the context would necessarily answer the question and would not replicate the real-life experience where many people will first see the logo or hear of the channel without the additional information that it is new. Therefore, we sought to avoid any context that suggested directly that it was either new or existing.

27. The selection of questions and question wording is extremely challenging. On one hand I am conscious that there can be problems with questions which lead respondents' thoughts into a specific area (and particularly one that they might not otherwise have considered), however, entirely open questions can (a) encourage respondents to speculate and (b) often obtain feedback that is entirely irrelevant to the issue that the survey seeks to address, for example answers relating to the colour of the logo or whether they like it. Therefore, we chose to begin the survey with a question that seemed a natural question to ask when showing something like a logo, namely whether or not they were aware of it. Questions 2 to 4 followed to allow them to expand on their answer to Question 1."

11. Question 1 does not in fact ask whether the respondents were aware of the logo. The question asks: "Have you heard of this television channel?" That, as it seems to me, in agreement with Mr. Hobbs, is a thoroughly misleading question because it presupposes that there is a television channel called THE STYLE NETWORK. In fact there is no such channel available in the United Kingdom and that question, in my judgment, plainly gets any survey off on the wrong foot.
12. I agree also with Mr. Hobbs that if one re-labels a survey as a witness collection exercise it does not improve the quality of the survey. The witnesses produced as result of a misleading survey are likely to give misleading and tainted evidence through no fault of their own.
13. I rule that the Malivoire 1 survey and any witnesses gathered as a result of it are not to be given in evidence.
14. That the leaves Malivoire 2. Malivoire 2 was designed by Mr. Malivoire in response to criticism of Malivoire 1. Mr. Hobbs was also critical of Malivoire 2 but in my judgment his criticisms of Malivoire 2 were less cogent than the criticisms he had of Malivoire 1. I think that Mr Malivoire has made an effort to produce a survey which is more balanced. Whether the survey proves anything at trial is, I think, a matter for the trial judge. Although I am sceptical about its value I do not feel so confident that the answer is that it proves nothing that I think it right to rule it out at this stage.
15. Consequently I will give leave for Malivoire 2 to be used as the basis for a survey together with permission for Mr. Malivoire to give evidence to explain the methodology and the results. We will now go on to consider the detailed timetable for directions as to evidence.

(There then followed discussion re timetable, directions as to evidence and costs)

MR. JUSTICE LEWISON:

16. I regard this as essentially a case management decision. It relates to the admissibility and adduction of evidence at trial. It is simply part of the overall costs of the case. The costs order will be costs in the case.

Thank you both very much. MR. HOBBS: It just remains to thank your Lordship for your patience.