UK High Court confirms it is not the end of the road for survey evidence


In the wake of the Interflora decisions, some considered the use of survey evidence in trade mark and passing off proceedings would become a thing of the past. The case of Enterprise Holdings Inc v Europcar suggests that such evidence still has a place in the Courtroom, albeit in more limited circumstances.


Enterprise alleged that Europcar infringed certain of its UK and Community Trade Marks registered in relation to vehicle rental services, the business of both parties, and was liable for passing off its products and services as those of Enterprise. It sought permission from the Court to rely on survey evidence at trial in order to demonstrate that its stylised “e” mark (see below) had acquired an enhanced distinctive character and reputation with considerable goodwill attached to it.


Morgan J applied the two limb test established by the Court of Appeal in Interflora and held that: (1) the proposed survey evidence would be of real value and (2) the likely use of the evidence justified the costs involved. Additionally, the evidence satisfied an extra requirement, introduced by Morgan J, that on the basis of documents he had seen Enterprise had demonstrated a likelihood that the survey would be held to be valid at trial. Enterprise’s application was thus permitted.


Pre-Interflora, the practice of the Courts was to allow survey evidence unless it was deemed valueless. Interflora drastically raised the threshold for permission to the extent that many surveys designed to assess the likelihood of confusion might be considered not to pass the test. In Interflora, Lewison LJ did however distinguish between surveys carried out to show confusion between marks and those to show distinctiveness, commenting that the latter was one of several situations where a survey was more likely to be permitted by the Courts. In Enterprise, Morgan J confirmed that the test set out in Interflora should be applied no less strictly in the case of distinctiveness surveys.

Crucially, he held that the value of the survey hinges on whether it will assist the Court in its role as a “robust gatekeeper” and thus “guard against an idiosyncratic decision” in circumstances where it is not able to determine a dispute based on its own experience. Since the result in Enterprise was envisaged in Interflora, Enterprise is unlikely to herald a fresh start in the arena. Instead, the case serves to clarify the circumstances in which it is appropriate for survey evidence to assist the Court. Accordingly, surveys as to distinctiveness of trade marks are still clearly on the map.

This article is part of BrandWrites - December 2014