England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT

		Royal Courts of Justice Rolls Building, Fetter Lane, London, EC4A 1NL
		22/07/2014

Mr Justice Morgan:

Introduction

1. This is another case about survey evidence in relation to a trade mark. In this case, the survey evidence relates to the distinctiveness of the Claimant's marks, which the Claimant alleges have been infringed by the Defendants. The survey evidence does not relate to the possibility of confusion between the Claimant's marks and any sign or device used by the Defendants. Further, this case does not involve a witness collection exercise.
2. Mr Carr QC and Mr Malynicz appeared on behalf of the Claimant and Mr Hobbs QC and Mr Hollingworth appeared on behalf of the Defendants.

The claim

3. The business of the Claimant, Enterprise Holdings Inc (referred to in this judgment as "Enterprise"), includes the provision of vehicle rental services. The business of the Defendants, Europcar Group UK Ltd and Europcar International SASU (together referred to in this judgment as "Europcar"), also includes vehicle rental services. In the present action, Enterprise alleges that Europcar has infringed its trade marks and is liable for passing off its products and services as those of Enterprise.
4. Enterprise's pleaded case refers to three United Kingdom trade marks and seven Community trade marks. Europcar has counterclaimed for revocation of two of the United Kingdom trade marks, pursuant to section 46 of the Trade Marks Act 1994 ("the 1994 Act") on the grounds that they have not been put to genuine use in the United Kingdom, in relation to any or all of the goods for which they were registered.
5. There are also concurrent proceedings before the Office for Harmonisation in the Internal Market ("OHIM") which concern Enterprise's Community trade marks. Those proceedings appear to have started with an application by Europcar to register a sign as a Community trade mark, which application was opposed by Enterprise, pursuant to article 41 of Council Regulation (EC) No 207/2009 ("the CTM Regulation"), relying on its earlier Community trade marks. That opposition has led to Europcar applying for the revocation of some of Enterprise's Community trade marks, pursuant to article 51 of the CTM Regulation, on the ground that the same have not been put to genuine use in connection with the goods or services in respect of which they were registered. In particular, Europcar has applied, on that ground, for revocation of three of the seven Community trade marks pleaded by Enterprise in these proceedings. In accordance with article 104 of the CTM Regulation, on 24 January 2014, an order was made in the present action staying Enterprise's claim for infringement of those three Community trade marks.
6. For the purpose of the proposed survey evidence as to the distinctiveness of Enterprise's marks, Enterprise has selected one particular mark, which is one of its Community trade marks. This mark is a stylised letter "e" on a green background. I will refer to it as Enterprise's "green logo". Enterprise's case is that its green logo has enhanced distinctiveness and a reputation and considerable goodwill attaches to it. It says that the other marks on which it relies in these proceedings are part of the same family of marks as this particular green logo.
7. Enterprise's green logo has been used by Enterprise in its advertisements and in marketing material so that it appears immediately before the word "Enterprise" or even as the first letter of the word "Enterprise" but its case is that the green logo has also been used separately from the word "Enterprise".
8. Enterprise has pleaded that:

(1) its trade marks (including the particular green logo) have an enhanced distinctive character and/or a reputation as a result of the use that has been made of them both in the United Kingdom and elsewhere in the EU;

(2) the United Kingdom use and promotion amounts to sufficient use for the purposes of establishing an EU reputation and an enhanced distinctive character in the EU in respect of Enterprise's Community trade marks;

(3) Enterprise's marks have been extensively used in its advertisements and marketing;

(4) Enterprise's marks have been put to very substantial use in the United Kingdom leading to a very substantial goodwill and reputation in the use of the marks so that they have come to denote goods and services of Enterprise exclusively.

9. Enterprise has further pleaded that, since around 2012, Europcar has used a figurative mark or sign in such a way as to infringe Enterprise's rights. In particular, Enterprise says that there is an infringement, first, pursuant to article 9(1)(b) of the CTM Regulation (in relation to the Community trade marks) and/or section 10(2) of the 1994 Act (in relation to the United Kingdom marks) and, secondly, pursuant to article 9(1)(c) of the CTM Regulation (in relation to the Community trade marks) and/or section 10(3) of the 1994 Act (in relation to the United Kingdom marks). The first of these allegations is that Europcar's sign is similar to Enterprise's marks in relation to goods or services which are identical or similar to those for which Enterprise's marks are registered, where there exists a likelihood of confusion on the part of the public which includes the likelihood of association with Enterprise's marks. The second of these allegations is that Europcar's use of its sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of Enterprise's marks and tends to cause members of the public to call to mind Enterprise and its trade marks; this is said to take unfair advantage of Enterprise's marks.
10. The passing off claim relies on the goodwill which had been pleaded in relation to the trade mark claims.
11. The Defence does not admit the alleged enhanced distinctiveness or reputation of, or the alleged goodwill associated with, Enterprise's marks and denies any infringement of Enterprise's rights.
12. The parties have agreed a list of issues which arise in the claim. This list includes an issue as to whether Enterprise's marks have an enhanced distinctive character and/or reputation and a further issue as to whether Enterprise's marks have come to denote goods and services of Enterprise exclusively.
13. The parties have not yet exchanged witness statements, which are due in September 2014. The claim is due to be tried in December 2014 with a time estimate of 4 days with a day's pre-reading for the judge.

The application

14. On 24 January 2014, the court gave directions in the claim. In particular it was directed that neither party had permission to adduce survey evidence without the leave of the court and further directions were given as to the making of an application for such leave.
15. On 28 February 2014, Enterprise applied in the present proceedings for permission to rely on survey evidence. The application sought the court's permission: (1) to adduce in evidence the results of a survey which has already been carried out for the purposes of the proceedings before OHIM ("the OHIM survey"); (2) to adduce in evidence the results of a further pilot survey carried out for the purposes of the present proceedings; (3) to carry out a full survey based on this pilot survey; and (4) to rely on expert evidence in relation to the above surveys.

The law as to distinctiveness

16. For present purposes, there was no real difference between the parties as to what is meant in the present context by the "distinctiveness" of a trade mark. Nonetheless, it is instructive to refer to some general statements as to the legal concepts involved and to the guidance in the cases as to the evidence which may be relevant in a dispute as to whether a mark has acquired a distinctive character as a result of its use. I was helpfully referred to the decision of Arnold J in Société des Produits Nestlé SA v Cadbury Ltd ("Nestlé") [2014] ETMR 17 and the very recent decision of the CJEU in Oberbank AG and another v Deutsche Sparkassen-und-Giroverband eV ("Oberbank") (Joined Cases C – 217/13 and 218/13; ECLI:EU:C:2014:2012) (19 June 2014).
17. I derive the following propositions from the decision in Nestlé:

(1) for a trade mark to possess distinctive character, it must serve to identify the goods or services, in respect of which registration is applied for, as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings;

(2) the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration is applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect;

(3) the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others;

(4) in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character;

(5) with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark; the expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking;

(6) a trade mark may acquire a distinctive character in consequence of the use of that mark as part of or in conjunction with another trade mark (which may itself be a registered trade mark);

(7) an issue which has been considered by the English courts in a number of cases is whether, having regard to the propositions set out above, it is sufficient to establish that a trade mark has acquired a distinctive character that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant's goods in the sense that, if they were to be asked who marketed goods bearing that mark, they would identify the applicant (whether expressly or impliedly e.g. by reference to some other trade mark used by the applicant);

(8) to date, the answer which has been given to this question by the English courts is that this is not sufficient, and that what the applicant must establish is that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods; it is not essential for the applicant to have explicitly promoted the sign in question as a trade mark; it is sufficient for the applicant to have used the sign in such a way that consumers have in fact come to rely on it as indicating the origin of the goods; on the other hand, if the applicant has explicitly promoted the sign as a trade mark, it is more likely that consumers will have come to rely upon it as indicating the origin of the goods;

(9) nevertheless, the English courts have recognised that it is not clear that this analysis is correct;

(10) the following question should be referred to the CJEU: "In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95/EC, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant's goods in the sense that, if they were to be asked who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?"

(11) in Arnold J's view, the correct answer to this question was that the applicant must prove that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods.

18. In addition, it is useful to refer to the following guidance given by the CJEU in Oberbank as to the evidence which may be relevant for the purpose of establishing that a mark has acquired a distinctive character as a result of its use:

(1) on the question as to how to determine whether a mark has acquired a distinctive character through use, the competent authority for registering trade marks must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking;

(2) that evidence must relate to use of the mark as a trade mark, that is to say for the purposes of such identification by the relevant class of persons;

(3) in the context of that assessment, the following items may, inter alia, be taken into consideration: the market share held by the mark in question; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations;

(4) if, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods or services as originating from a particular undertaking because of the trade mark in question, it must in any event hold that the requirement laid down in Article 3(3) of Directive 2008/95 for the mark not to be excluded from registration or declared invalid is satisfied;

(5) the law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired though use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment;

(6) if the competent authority finds it necessary to resort to such a survey, it must determine the percentage of consumers that would be sufficiently significant;

(7) the circumstances in which the requirement concerning the acquisition of a distinctive character through use, under Article 3(3) of Directive 2008/95, may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages;

(8) in an overall assessment of the evidence that the mark has acquired a distinctive character through use, it may indeed appear, inter alia, that the perception of the relevant public is not necessarily the same for each of the categories of marks and that, accordingly, it could prove more difficult to establish the distinctive character, including distinctiveness acquired through use, of trade marks in certain categories than that of those in other categories;

(9) the difficulties in establishing distinctive character which may be associated with certain categories of marks because of their nature - difficulties which it is legitimate to take into account - do not justify laying down stricter criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law on other categories of marks;

(10) it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use and that, even with regard to contourless colour marks, and even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use.

19. Both of these cases referred to article 3(3) of the Trade Mark Directive (2008/95/EC) which refers to a mark acquiring a distinctive character following the use which has been made of it.
20. The relevant date for assessing acquired distinctiveness is the date that Europcar began using its allegedly infringing sign: see Levi Strauss & Co v Casucci SpA [2006] ETMR 71, CJEU at [17] – [20]. In this case, it appears that the relevant date was not earlier than December 2012 and Enterprise may wish to argue that the relevant date is later still.

The legal principles as to surveys

21. Both Nestlé and Oberbank referred to the evidence which may be relevant when the court is asked to determine whether a mark has acquired a distinctive character. Such evidence may include an opinion poll or a survey where the court has particular difficulty in assessing the distinctive character acquired through use of a mark.
22. OHIM does not require a party to proceedings before it to obtain its permission before conducting a survey and submitting the results as evidence in support of a contention that a mark has acquired a distinctive character through use. In other words, OHIM does not perform a gatekeeping role in advance.
23. The Opposition Guidelines published by OHIM in March 2004 deal with opposition before OHIM in relation to applications to register Community trade marks. Part 5 of the Opposition Guidelines deals with Trade Marks with reputation and refers to article 8(5) of the CTM Regulation. These Guidelines contain the following passage (at page 29):

"Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitive products.

The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method." [Original emphasis]

The Guidelines then proceed to point out a number of matters which OHIM needs to know in order to evaluate the reliability of a survey.

24. I was also referred to an article entitled "Surveys as evidence in proceedings before OHIM" by Anne Niederman in (2006) IIC 260. The article concluded that survey evidence was being submitted in a growing number of cases argued before OHIM and with increasing success. The article went on to comment that OHIM's current criteria did not sufficiently ensure the validity and quality of the survey research as evidence and recommended that in the future more emphasis needed to be placed on some crucial factors such as the definition of the relevant consumer group or trade circle, the representativeness of the sample and the wording of the questionnaire.
25. The CJEU in Oberbank stated that the admissibility of an opinion poll or survey in a national court could be controlled by conditions laid down by the relevant national law. The legal principles to be applied in this jurisdiction have now been laid down by the Court of Appeal in Interflora Inc v Marks and Spencer plc [2013] FSR 21 ("Interflora 1") and those principles were further considered and applied in Interflora Inc v Marks and Spencer plc (No. 2) ("Interflora 2") [2013] FSR 26 and Zee Entertainment Enterprises Ltd v Zeebox Ltd ("Zeebox") [2014] EWCA Civ 82.
26. The decision in Interflora 1 directly concerned a witness collection exercise and was not an application for permission to rely upon a survey. However, the Court of Appeal considered in great detail the case law as to the admissibility and utility of survey evidence in relation to trade mark infringement claims. The decision in Interflora 2 directly concerned evidence of alleged actual confusion in relation to the use of a trade mark but, again, the Court of Appeal commented more generally on survey evidence in this context. Zeebox involved an application for permission to adduce survey evidence in relation to a claim of alleged passing off.
27. In Interflora 1, the principal judgment was given by Lewison LJ, with whom Etherton and Hughes LJJ agreed. Lewison LJ discussed surveys and witness collection exercises between [60] and [153]. He focussed on cases where the evidence was put forward in relation to alleged confusion between the claimant's trade mark and the defendant's sign. He stressed that the legal test in relation to the possibility of such confusion required the court to consider the perspective of the average consumer of the goods or services in question. He also considered cases where survey evidence was sought to be relied upon for other reasons, for example, to assist in showing that the claimant's mark had acquired enhanced distinctiveness. On that subject, Lewison LJ had said at [35]:

"In cases where acquired distinctiveness of a mark is in issue a survey may accurately identify that proportion of the relevant public which recognises the mark as a badge of trade origin. It will then be for the fact finding tribunal, with the aid of such a survey, to decide whether a significant proportion of the relevant public identify goods as originating from a particular undertaking because of the mark: see Windsurfing Chiemsee Produktions-und-Vertriebs GmbH v Boots-und-Segelzubehor (C-108/97) [1999] ECR I-2799; [1999] ETMR 585 at [52], [53]."

28. At [137] Lewison LJ added:

"That is not to say that there can never be evidence called in a case of trade mark infringement. The court may need to be informed of shopping habits; of the market in which certain goods or services are supplied; the means by which goods or services are marketed and so on. In addition I must make it clear, however, that different considerations may come into play where:

i) evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement;

ii) evidence from consumers is called in order to amplify the results of a reliable survey;

iii) the goods or services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge's experience;

iv) the issue is whether a registered mark has acquired distinctiveness; or

v) where the cause of action is in passing off, which requires a different legal question to be answered." [my emphasis]

29. In his discussion of earlier cases, Lewison LJ referred to the decision of Etherton J in D Jacobson & Sons Ltd v Globe Ltd [2008] FSR 21 where the judge held that a survey was of considerable help on the question whether the mark was distinctive.
30. Since the early 1980s, the courts had applied what are known as "the Whitford guidelines" in relation to the admission of survey evidence in trade mark infringement cases. These guidelines were stated by Whitford J in Imperial Group plc v Philip Morris Ltd [1984] RPC 293 and were summarised in Inteflora 1 at [61] in these terms:

"These ("the Whitford guidelines") can be summarised as follows:

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; and

vii) the instructions given to interviewers must also be disclosed." [my emphasis]

31. In Interflora 1 at [13] to [141], Lewison LJ ruled that even if the proposed survey evidence were technically admissible, the court could still exclude it; he referred to CPR 1.4(1), 1.4(2)(h) and 32.1. He described the approach which should be adopted by the court in this context at [150]:

"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."

32. The principles and the practice identified in Interflora 1 were applied by the Court of Appeal in Interflora 2. This was a case where the claimant wished to call evidence which did not involve a survey or a witness collection exercise but which, the claimant argued, was evidence of actual confusion. Lewison LJ stated at [26] that the court ought not to admit evidence from consumers unless satisfied that: (1) the evidence is likely to be of real value; and (2) that the likely value of the evidence justifies the cost. He had earlier stated at [5] that "the judges should be robust gatekeepers in that respect". In the same case at [33], Sir Robin Jacob pointed out that the court's decision did "not mean that the days of survey evidence were over". He added: "It is possible to conduct fair surveys and they may indeed lead to witnesses of value". Longmore LJ agreed with both judgments.
33. In Zeebox, Floyd LJ stated, at [30], that the real value test from Interflora 1 did not make it necessary to scrutinise the strength of the claimant's case overall but it did require the judge to scrutinise the value of the survey as evidence.
34. In Interflora 1, Lewison LJ distinguished between a survey as to the distinctiveness of the claimant's mark and a survey as to possible confusion between the claimant's mark and the defendant's sign. Enterprise argued that the gatekeeper test to be applied in the case of a distinctiveness survey should be different from the test to be applied in the case of a confusion survey. In particular, it was submitted that the test for a distinctiveness survey should be less strict. I do not agree. The reasoning in Interflora 1 applies equally to both types of survey of consumers in relation to trade marks. However, although the test is the same, the result of applying the test may vary depending on the subject matter of the survey. In the case of a survey as to confusion, the question whether the survey is likely to be of real value may readily be answered in the negative in a case where the goods or services in question are ordinary consumer goods or services and the judge feels that there will be no real difficulty in the court determining the issue of confusion without a survey. Conversely, in the case of a survey as to acquired distinctiveness, the court may feel that it is not able to determine such a dispute based on its own experience and/or the court may feel the need to guard against an idiosyncratic decision. A further possible distinction between a confusion survey and a distinctiveness survey is that the former may involve a prediction as to the likelihood of something happening whereas a distinctiveness survey addresses the issue of whether something has happened.
35. Further, I consider that whether the survey in question relates to distinctiveness or confusion, the court must consider whether it is likely that the survey will be held at trial to be a valid survey. If the court considers that the survey is unlikely to meet that requirement then, as a robust gatekeeper, the court must rule that such a survey may not be admitted at the trial. This may not be an easy question for the court, particularly where the court has a conflict of expert evidence on the validity of the survey. There is no suggestion that the court should allow cross-examination of the competing experts and the court will have to do the best it can to decide, on the documents alone, the likelihood of the survey being held valid at a trial. That seems to have been the approach adopted by the Court of Appeal in Zeebox.
36. The second part of the test in Interflora 1 is to ask whether the cost of the survey is justified by reference to the likely benefit from the survey. It may have been assumed in Interflora 1 that most surveys would not pass the "likely to be of value" test so that robust gatekeeping at the interlocutory stage would save the parties the expense of the matter being considered at a trial. Of course, if that assumption is not appropriate in a particular case, because the gatekeeping judge nonetheless allows a party to rely on a survey at a trial, then the interlocutory stage will increase the costs of the litigation. Further, it seems to have been assumed that the cost of the gatekeeping function would be comparatively modest by comparison with the cost of dealing with survey evidence at the trial. That will not always be so. It looks like it is not so in the case before me. In this case, both sides prepared costs budgets. Both budgets included figures in relation to survey evidence. Enterprise's budget stated that if Enterprise chose to rely on survey evidence, its costs in so doing would be £117,000 (out of a total costs budget of £1,080,000). The solicitors' evidence was that Europcar's estimate for its costs of responding to Enterprise's survey evidence would be £99,000, although Europcar's costs budget which was provided to me stated that its costs of dealing with Enterprise's survey would be £75,000 (out of total costs budget of £615,000). I will take the higher figure of £99,000 for present purposes. I was also given costs schedules in relation to this interlocutory dispute as to whether Enterprise should be permitted to rely on survey evidence. The costs in relation to the interlocutory dispute have been £106,000 (Enterprise) and £109,000 (Europcar). If I rule that Enterprise may not rely on survey evidence, then the costs incurred on both sides will be some £215,000. If I rule that Enterprise may rely on survey evidence, then the costs incurred on both sides will be about £431,000. If there had been no interlocutory stage dealing with survey evidence and the survey evidence had been addressed only at the trial, then the costs incurred on both sides would be about £216,000. [Following the release of a draft of this judgment, counsel for Enterprise wrote stating that the estimated costs in the costs budgets included some costs for the gatekeeper stage. If this is so, then there is some element of double counting in the above figures but I am not able to identify the extent of the same.]

The surveys in this case

37. Enterprise has already carried out a survey for the OHIM proceedings. In addition, it has carried out a pilot survey specifically for the present proceedings. This has been referred to as "the English pilot". Enterprise seeks permission to carry out a full survey based on the English pilot. Enterprise then wishes to rely on the OHIM survey, the English pilot and the full survey based on that pilot and, in addition, to call its survey expert to explain the methodology used in the surveys.

The OHIM survey

38. The sample used for the OHIM survey comprised adults who do not work in certain industries, such as car rental. This was ensured by recruitment questions at the outset of the survey. The survey used third party data from TGI (a market research organisation) to identify an appropriate demographic. The survey was not confined to persons within this demographic; instead, the survey was designed so that 75% of the sample corresponded to this demographic and 25% comprised anyone who appropriately answered the recruitment questions. The respondent was then asked whether he had rented a vehicle in the UK in the last 10 years or would consider doing so in the future. If the answer was "yes", he was then shown the show material which was Enterprise's green logo. At the same time as showing this material, the interviewer said to the respondent: "I'm now going to show you something". Some respondents spontaneously made comments when shown the material, before any further questions were asked of them.
39. A respondent was then asked three questions:

(1) Have you ever seen this before in relation to vehicle rental services?

(2) Where have you seen it before?

(3) Is there anything else that you can tell me about it?

40. The answers to the questions were recorded. A pilot for the OHIM survey involved 101 respondents and the full OHIM survey involved 1038 respondents. The OHIM pilot survey was conducted between 24 and 26 October 2013 and the full OHIM survey was conducted between 2 and 30 November 2013.

The English pilot survey

41. The methodology of the English pilot survey differed somewhat from that used for the OHIM survey. For the English pilot, the recruitment questions were asked at the end and the question ("What can you tell me about what you are looking at?") contained no information about the product or service sector. A total of 257 interviews were conducted. The survey used the TGI demographic data that had been used for the OHIM survey. The 257 interviews included 100 who had rented a car in the last 10 years or would consider doing so in the future. The sample of 100 was matched against the TGI data and it was found it broadly reflected that data.
42. More particularly, the English pilot involved showing the show material to the respondent at the same time as saying "I am now going to show you something". Some respondents spontaneously made comments when shown the material, before any further questions were asked of them. The interviewer then asked the respondent:

(1) What can you tell me about what you are looking at?

(2) Do you or any close friends or members of your family work in car rental services or as a lawyer?

(3) Have you in the last 10 years rented or would consider in the future renting a vehicle in the UK?

43. The English pilot survey was conducted between 8 and 10 February 2014. Enterprise now wishes to carry out a full survey based on the English pilot to produce an additional 400 or an additional 900 qualifying respondents.

The points made by Europcar

44. Europcar has raised a large number of points about the actual and the proposed surveys in this case. Most of its points concerned the validity of the surveys. It is convenient to deal with those points under the following headings:

(1) the samples were too narrow;

(2) the samples were too wide;

(3) there was a demographic bias;

(4) the questions had a biasing or leading effect;

(5) the questions invited speculation;

(6) the coding of the answers was inappropriate;

(7) there was no control survey;

(8) the results of the English pilot were less impressive from Enterprise's point of view than the results of the OHIM survey;

(9) the dates of the surveys were after the relevant date for assessing distinctiveness, reputation or goodwill.

45. I was provided with written evidence from market research or survey experts in relation to some of these points. The expert for Enterprise was Mr Philip Malivoire and the expert for Europcar was Mr Adam Phillips.

The samples were too narrow

46. As explained, the samples for the surveys in this case were of those who hired a vehicle in the UK in the last 10 years or would consider doing so in the future. Mr Phillips expressed the view that the samples selected for the surveys in this case were too restricted. He stated that it would be preferable to focus on a broader group consisting of people who drive cars.
47. Mr Malivoire did not accept Mr Phillips' criticism of the samples. He pointed out that a balance had to be struck between a sample being too restrictive and a sample being too broad. A narrow sample could distort the result if it focussed on individuals with a fresh and recent recollection of the experience of car hire and the brands involved. A sample which was too broad would be likely to include people who would never consider renting a vehicle. Mr Malivoire thought that the samples used were sufficiently broad as they went back sufficiently far, together with an unlimited time into the future. Mr Phillips' sample of all car drivers was too broad as it would include drivers who would not consider renting a vehicle in the UK in the future. Mr Malivoire estimated that his samples would include some 40% of the UK population.
48. My assessment at this stage, acting as a robust gatekeeper, attempting to assess the likely value of the surveys at a trial, is that Mr Malivoire is likely to be considered to be right on this point. Accordingly, I hold that it is likely that the surveys will be held to be valid notwithstanding this criticism of the samples.

The samples were too wide

49. As explained, Mr Phillips' criticism of the samples was that they were too narrow. However, Mr Hobbs advanced the argument that the samples were open to criticism because they were too wide; he submitted that the sample should be confined to those who had hired a vehicle in the last 12 months. At first sight, the submission is a remarkable one, not supported by Europcar's own expert. However, I note that in the course of Mr Phillips criticising the samples as too narrow, he referred to the possibility of having three different samples of, first, those who had had never hired a vehicle, secondly, those who had hired a vehicle in the last 10 years and, thirdly, those who had hired a vehicle in the last 12 months. Mr Phillips suggested that the results from these three samples could be interesting as the results might show how perceptions of Enterprise's green logo had changed by reference to how recent the experience of vehicle hire had been. As to that suggestion, I do not see that Enterprise is required to conduct a survey to show information of that kind.
50. Returning to the submission that the samples were too wide, my assessment at this stage is that Mr Malivoire is likely to be held to be right that the suggested narrower samples would be open to the criticism that they would be biased towards those with fresh and recent recollection of vehicle hire and the brands involved.

A demographic bias

51. Mr Phillips' original report was critical of the demographic data used in the conduct of the OHIM survey but he was less critical, or even uncritical, as to the use of the demographic data used in the English pilot survey. Having read Mr Malivoire's response to his original report, Mr Phillips very fairly withdrew a large part of his earlier criticism on this point.
52. In any case, Mr Malivoire has explained the precise thinking behind his use of the demographic data and he explains that if, in the case of the OHIM survey, he had used demographic data in a way which would be favoured by Mr Phillips, it is likely that the results would have been more favourable to Enterprise's case.
53. My assessment at this stage is that whatever remains of Mr Phillips' criticism of the use of the demographic data is not likely to deprive the surveys of real value. Indeed, I consider that the fact that the OHIM survey and any full English survey will be on different bases in this respect will not be a defect but may be helpful.

The questions had a biasing or leading effect

54. Mr Phillips is critical of the questions asked in the OHIM survey. As part of the recruitment questions, the interviewee is asked about possible connections with 7 different occupations, one of which involved car rental. Further, the interviewee was asked about whether he had rented, or whether he would rent, a vehicle in the UK. Mr Phillips stated that these questions would have introduced significant bias into the answers to later questions.
55. As explained, the sequence of questions was different in the English pilot survey. Nonetheless, Mr Phillips suggests that the question "what can you tell me about what you are looking at" is a leading question because it encourages speculation.
56. Unlike Mr Phillips, I would distinguish between a leading or biasing question and a question which encourages speculation. With the first type of question, the provision of a context for the question might tend to lead the interviewee to a particular answer. With the second type of question, the absence of any context means that the interviewee is not being led to a particular answer but is encouraged to speculate in an artificial way created by the survey process. The problem therefore is that, if context is given, the survey might be leading and, if no context is given, the survey might invite artificial speculation.
57. One response to this difficulty might be to say that it will never be possible to devise a survey which is not leading and which does not invite speculation, so that surveys should be abandoned in this type of case. I think that is too extreme a view. The court will be concerned to see that a workable balance has been struck between the two different and conflicting approaches.
58. My assessment at this stage is that this criticism of the surveys is not likely to deprive both of the surveys (the OHIM and the full English survey) of validity. I do not consider that it is right at this stage to rule out one or the other of the two surveys although I can see that at trial a judge might have a strong preference for one of them over the other.

The questions invited speculation

59. I have dealt with this topic under the former heading.

The coding of the answers was inappropriate

60. Mr Malivoire has coded the results obtained from the OHIM survey. Mr Phillips has criticised this coding. Mr Malivoire has since made it clear that his coding was his own attempt to analyse the results and whilst he thinks that it was helpful he does not suggest that the court or anyone else will be bound by it. It will be open to the parties to refer to the full survey results and make comments or submissions as to the information which they contain and the relevance of that information to the legal issues in the case.
61. The assessment I am required to make at this stage is whether the results of the survey are likely to be of real value at the trial. The results of the survey do not depend on Mr Malivoire's coding and so the criticism of his coding, whether justified or not, does not determine the question I have to consider.

There was no control survey

62. Mr Phillips points out that there was no "control survey" as part of the OHIM survey and there will be no "control survey" as part of the proposed full English survey. By "control survey", Mr Phillips means another survey run in parallel where the interviewees are shown "a different stimulus of known characteristics and performance". The results of the control survey can then be compared with the survey which used Enterprise's green logo to assess the information so provided.
63. In support of this criticism, Mr Hobbs showed me the report of the Courts & Tribunals Subcommittee of the International Trademark Association entitled "Best Practices in Conducting Surveys in Trademark Matters". This report contains a list of recommended matters in relation to such surveys. One recommendation is to use control questions in surveys to record consumer impressions. The report discusses surveys designed to assess whether a mark has acquired a distinctive character but also surveys for other purposes such as the prediction of the likelihood of confusion between signs. The report does not suggest that such control surveys are conducted in any jurisdiction in Europe although it may be that they are conducted in the United States.
64. Mr Malivoire does not accept this criticism. He says that the suggested use of a control is problematic. He asks: (1) how would one identify a suitable control in this case? and (2) if there were a suitable control, how would a comparison of the results assist?
65. My assessment at this stage is that this criticism of the surveys is not likely to deprive the surveys of real value.

The results of the English pilot were less impressive from Enterprise's point of view than the results of the OHIM survey

66. My assessment at this stage is that this comment about the surveys is not likely to deprive the surveys of real value.

The dates of the surveys were after the relevant date for assessing distinctiveness reputation or goodwill

67. The relevant date for the claims in infringement and passing off is December 2012, or possibly later. The full OHIM survey was carried out in November 2013. The English pilot survey was carried out in February 2014 and the full English survey has yet to be carried out.
68. A time interval between the relevant date for the claim and the date of the survey is commonplace. The OHIM Opposition Guidelines discuss the implications which might arise due to the passage of time and how they might be addressed in the evidence: see page 354 at paragraph 1.2.5. In the present case, I do not consider that the passage of time is likely to deprive the surveys of real value.

Are the surveys likely to be of real value?

69. Before addressing the "likely to be of real value" test derived from Interflora 1, it may be helpful to discuss the point summarised at paragraph 17(4) and 18(5) above as to the utility of a survey when the competent authority has "particular difficulty in assessing distinctive character". This question has been identified in a number of decisions of the European Court of Justice. It seems that it is envisaged that the question will be answered as part of the overall assessment made by the competent authority, rather than at an earlier gatekeeping stage. If the question is addressed as part of the overall assessment, then the competent authority will be able to take into account all of the other evidence as to acquired distinctiveness when answering the question. If the question has to be answered at an earlier gatekeeping stage, then the competent authority may be much less clear as to whether the case will turn out to be one of particular difficulty. It may be that the cases which are more likely to be of real difficulty are those where the mark in question is not a traditional trade mark.
70. In the present case, I consider that it is likely that there will be difficulty in assessing whether Enterprise's green logo has acquired distinctive character through use. Although the green logo is a traditional trade mark, some (possibly most) of its use has been as part of or in conjunction with another trade mark and the survey is designed to assist with the question whether the green logo, by itself, has acquired distinctiveness as identifying the goods or services of Enterprise.
71. So far, I have considered Europcar's criticisms of the surveys carried out, or proposed to be carried out, for Enterprise. I have held that it is likely that the surveys will be held to be valid surveys. It nonetheless remains for Enterprise to satisfy the court at this gatekeeping stage that it is likely that the surveys will be of real value at the trial.
72. My conclusion is that it is likely that the surveys will be of real value at the trial. I have already explained what is involved in the concept of a mark having a distinctive character acquired through use. I do not consider that a trial judge in this case will be able to determine that question by using his own knowledge and experience. Even if a trial judge thought that he had relevant knowledge and experience, the trial judge would wish to guard against the possibility that his view might be somewhat idiosyncratic or not fully informed. Of course, the trial judge will have evidence on the question of distinctiveness over and above the survey evidence. At the present stage, I do not have sight of that evidence. It is not possible at this stage to assess whether the survey evidence will be of real value in addition to the other evidence but, as I read the decision in Zeebox, I am not required to attempt to carry out that exercise.

Does the likely value of the surveys justify the cost?

73. I commented earlier (at paragraph 36 above) on the costs already incurred and the estimated costs in relation to surveys in this case.
74. It seems to me that the cost/benefit test must be primarily for the purpose of saving costs for the party (in this case, Europcar) which opposes the admission of survey evidence. I do not see how that the test is designed to protect Enterprise who positively wants to rely on survey evidence. I can see that the court will have an interest of its own in preventing prolongation of a trial by the admission of survey evidence which is not likely to be of real value; however, that is not a major consideration in this case where the time estimate for the trial is 4 days, with 1 day for the judge's pre-reading.
75. Approaching the cost/benefit test on the basis that it is designed to protect the party opposing the admission of survey evidence, I comment that Europcar has already spent £109,000 in seeking to protect itself against the possibility that it will incur an estimated cost at trial of £99,000. That casts doubt on the extent of Europcar's concern as to the cost of survey evidence. Further, Mr Hobbs has told me that if I permit Enterprise to rely on survey evidence, Europcar will wish to appeal that decision; it will thereby incur further cost.
76. I have already held that survey evidence is likely to be of real value in this case. Europcar regards £109,000 (and indeed the further costs of an appeal) as proper expenditure on the question whether such evidence should be admitted at the trial. I have referred to both sides' estimated costs for the trial. Judged against the background of these figures, I consider that the cost of the survey evidence should not prevent Enterprise relying upon such evidence which I have held is likely to be of real value at the trial.
77. It has also been pointed out that these parties will have to address the OHIM survey in the course of the concurrent proceedings before OHIM.

The result

78. I will permit Enterprise to rely on survey evidence in accordance with its application.