Surveying the scene - passing off & surveys
Updated: Oct 25, 2020
"Judges accustomed to trying cases of this nature are rightly somewhat suspicious of evidence obtained in this way [via surveys], for so much can depend upon the conditions in which surveys are conducted, the format of the questions posed and the manner in which they are asked."
The concerns noted by Lord Oliver in Reckitt & Colman Ltd v Borden Inc  1 All E.R. 873 have remained at the forefront of the judicial mind and whilst they have come in and out of vogue over the years, they are now accepted as a necessary evil in at least some circumstances.
The survey question was recently considered in Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd & Ors  EWHC 3196 (Ch). This trade mark and passing off claim concerns the colour and shape of the Seretide combination asthma inhalers. See earlier IPKat posts here and here. Although the case is not "hot off the press" it is nevertheless an important development to share with the IP community.
The passing off portion of the case is essentially a get up claim which focuses on the use of the colour purple for inhalers.
Two surveys regarding the primary purple Pantone (2587C) on the inhalers was admitted into UK IPO opposition proceedings (which are now stayed). As the survey had already been carried our and considered by the parties, the question in this application was can the survey evidence be relied upon in the High Court proceedings.
The surveys were added to the opposition proceedings as evidence of acquired distinctiveness. Likewise in the High Court, the Claimant wished to rely on them in the High Court in relation to their case on distinctiveness (and not as evidence of confusion).
It is clear from Interflora 1 (Interflora v Marks and Spencer  EWCA Civ 1501) and Interflora 2 (Interflora v Marks and Spencer  EWCA Civ 319) that surveys should only be permitted if they are of "real value". This was less of an issue here as the surveys had already been carried out so as Birss J put it, this was really a case management issue.
Various additional objections were raised to the surveys being included. In particular, the fact that they survey was based on a square of colour (rather than it in use on the product). This was dismissed as the colour was used on the packaging and marketing materials as well. In these circumstances, Birss J noted that "it is sensible to test it using a square of colour rather than a particular object like an inhaler or a leaflet or anything else".
Other objections included:
inadequate records of how the interviewers were trained and briefed (dismissed as a minor issue in this context which could be dealt with at trial - but not an excuse for future litigants failing to maintain adequate records);
the interviewees did not include patients (given the prescription nature of the products, focusing on GPs and pharmacists "was sensible");
the survey answers may not be truly verbatim (a question which could be tested at trial);
GPs were sampled on a per practice basis which did not consider the number of GPs at the practice (a question which could be tested at trial);
the structure of the surveys was leading ("there is an element of speculation in the questions, but the essential structure is obviously intended to minimise any leading" in any event the trial judge would be able to reach their own decision);
the additional cost - the total estimate of both sides was a further £500,000 ("an enormous sum” said Birss J but nevertheless less than 10% of the costs of the proceedings and likely an over estimate of the amount of time required on cross examination).
All objections failed and the survey evidence was allowed.