UK: Court Of Appeal Restricts The Use Of Witness Gathering Exercises In Trade Mark Infringement Cases

Last Updated: 18 January 2013
Article by Mark Holah, Beverley Potts and Nick Rose

Marks & Spencer plc v (1) Interflora Inc & Anor [2012] EWCA Civ 1501

The Court of Appeal has provided important guidance that will continue the trend of restricting the use of surveys and evidence from witnesses who responded to surveys in trade mark infringement cases. This should simplify the way that cases need to be prepared, significantly reducing the costs of trade mark enforcement.


The dispute arose in the well-known litigation between Marks & Spencer ("M&S") and Interflora regarding the purchase by M&S of the INTERFLORA trade mark as a Google AdWords keyword. This resulted in the M&S "sponsored link" advertisement appearing whenever a user searched in Google for "Interflora".

In our previous publication "Who will come up smelling of roses?", we reported on the decision of the Court of Justice of the European Union ("CJEU") that use of a trade mark as a keyword could be prevented if it was liable to adversely affect one of the functions of the trade mark (the essential origin function and those regarding quality, communication, investment and advertising). However, trade mark infringement would only occur if "reasonably well-informed and reasonably observant internet users" could not easily grasp the difference between the keyword advertiser and the trade mark owner.

In June this year, Arnold J gave permission for Interflora to adduce, in its trade mark infringement claim, evidence of witnesses who had responded to a survey, even though the survey itself wasn't admitted. This has become known as a "witness gathering exercise" and is designed to place before the Court evidence from "real people" who can advance an infringement claim but can also be cross-examined. 

M&S appealed on the basis that evidence from individual respondents could not be probative of the issue in the case: the state of mind of the reasonably well-informed and observant internet user. M&S argued that the Court can not know whether the selected witnesses are reliable proxies and the problem is compounded where the party calling the witnesses is permitted to select those who give most support to its case.

Court of Appeal Decision

Lord Justice Lewison, in the main judgment, gives a detailed review of previous case law on the use of survey evidence and witness gathering exercises in trade mark and passing off cases. The up shot is that, whilst the Courts have previously allowed evidence from witness gathering exercises, it has generally been of little or no value and does no more than confirm the conclusion that the judge would have reached without it. Lewison LJ admitted that this sort of evidence sometimes has greater effect in passing off cases but that is because they concern a different legal question.

He confirmed the principle that, in trade mark cases, evidence from members of the public could not stand as proxy for legal constructs such as the "average consumer" or "reasonably well-informed and reasonably observant internet user". AdWords are an ordinary consumer service and therefore the judge could reach a conclusion from his own experience without evidence from consumers. Circumstances in trade mark cases where such evidence might be of real value were difficult to imagine. Examples given were where the Court wanted to know of consumer shopping habits, the spontaneous reaction of the public to an allegedly infringing sign and where the goods concerned were not supplied to ordinary consumers.

Arnold J had wrongly assumed that, because the evidence was technically admissible, it had to be allowed. He should also have considered whether the likely utility of the evidence justified the costs involved.

Guidelines for future survey evidence and witness gathering exercises

The Court provided the following guidelines for those seeking to rely on survey evidence and witness gathering exercises in the future:

  • No party may adduce evidence from respondents to any survey without the Court's permission;
  • A party may conduct a pilot survey (to work out the best method for carrying out a further survey) without permission but at his own cost risk. No further surveys may be conducted without the Court's permission;
  • Only if the Court is satisfied that the evidence will be of real value will permission for the survey be granted. In trade mark infringement cases where the issue is one of deception in the provision of ordinary consumer goods or services, this is likely to be satisfied only in special or unusual cases;
  • When seeking permission for a survey, the applicant needs to provide the Court with:
    • the results of any pilot survey;
    • evidence that a further survey will comply with the Court's guidelines set out in Imperial Group plc v Philip Morris Ltd [1984] RPC 293 (the "Whitford Guidelines"). Essentially these ensure that there are no leading questions, the survey is statistically relevant and covers a relevant cross-section of the public and full disclosure is given of how the survey is conducted, the instructions given and exact answers;
    • the costs of the pilot survey and estimated costs of the further survey; 
  • When seeking permission to call witnesses who have responded to a survey, the applicant needs: (i) to provide a witness statement, (ii) to demonstrate that the evidence will have real value; (iii) to provide details of all surveys that have been carried out; (iv) to disclose how the witness was selected from other respondents; and (v) to provide the costs of the pilot survey and the estimated costs of carrying out further work in relation to those witnesses.


Judges have, since the 1980s, become more sceptical about the value of surveys in trade mark cases so many parties started to use surveys only to identify favourable witnesses. Arnold J at first instance thought that it was wrong to put forward witnesses as representatives of the relevant public when the originating survey was not before the Court. However, he felt bound by "the considerable precedent" for Chancery judges to rely upon such evidence. The Court of Appeal has now discredited this practice in trade mark infringement cases except in exceptional circumstances where the evidence will be of real value.

This clarification should be welcomed by trade mark owners and practitioners. There is no change in what constitutes an actionable trade mark infringement. In the majority of cases, parties no longer need to embark on costly surveys or witness gathering exercises and simply need to rely on the judge to determine more issues from his own experience. This should make litigation much cheaper. However, the Court has confirmed that this sort of evidence will be accepted in exceptional cases where the parties follow the clear guidance and show that the value will justify the costs involved.

The long-awaited infringement trial is expected to be heard in April next year when the English Court will interpret the CJEU decision on AdWords.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.