IP Law

In the case of Cosmetic Warriors Ltd v Amazon.co.uk Ltd [2013], the court refused permission for survey evidence to be conducted and adduced in a trade mark infringement and passing off claim stating that it was unlikely to be of real value to a trial judge, if the judge were to step into the position of an average consumer.

The claimant, Cosmetic Warriors Ltd, a handmade cosmetics manufacturer and retailer brought a trade mark infringement  against the respondents, Amazon.co.uk, alleging:

• That when a search was conducted for “lush” in the "health and beauty" section of Amazon’s search engine, a number of products were retrieved which were similar to lush, but were not lush products;

• A person searching for "Lush Bath Products" would be redirected to Amazon's website via Google AdWords. As lush products were not on sale, alternative products were offered for sale.

The claimant applied to amend its pleadings to introduce a passing off claim and sought permission from the court to carry out and adduce the results of a survey of members of the public.

With regard to the application for amendment to its particulars of claim, the claimant relied on the same facts seeking (i) an injunction to stop passing off; and/or (ii) an enquiry for damages.

The claimant had already carried out two pilot surveys to determine whether there was confusion on the part of the public if they were to enter "lush" into Amazon's search engine.

The claimant submitted that the amendment was necessary as although the generally accepted legal position that trade mark infringement and passing off were conceptually different was doubted in a recent Court of Appeal decision, in the event that the tests for trade mark infringement and passing off become conceptually distinct, this might lead to different results and therefore wanted to protect its position if this were to happen.

Amazon submitted that the real reason why the claimant wanted to plead a passing off claim was to be able to introduce survey evidence that it could not rely on in a claim for trade mark infringement.

It was held that:

• The court sympathised with the claimant's position where it was potentially exposed to a change in the law, Interflora Inc v Marks & Spencer Plc [2012] EWCA Civ 1501, [2013] 2 All E.R. 663 considered.

• “There was no real likelihood that the proposed amendment would add significantly to the issues or material to be deployed; it was irrelevant when the application was made so long as it was made in good time, as the instant application was.”

• The amendment that was proposed relied on facts already pleaded and the claimant only wished to plead that those facts may give rise to different legal consequences.

• Although the court was aware of the danger of the impact that the amendment might have on the question of the survey, the correct decision was to allow the claimant to make the amendments sought.

• “The Interflora litigation had made it clear that the pre-existing practice in relation to surveys where there was a tendency to allow a survey to go into a trial and allow a trial judge to make of it what he would had to change, Interflora No 1 considered. The survey questionnaire which had been provided to the court was sufficient to see its objectives and methodology; however, the court decided that a survey was not to be admitted at all as what would determine the trial outcome was whether L could establish in relation to trade mark infringement that the average consumer had been confused and in relation to passing off whether a significant proportion of the public had been confused.”

• It was possible to see how a survey reliably conducted could help to establish whether a significant proportion of the public had been confused, although it was more difficult to determine what the concept of an average consumer represented.

• “What that concept required was someone to take a view in relation to what a consumer might think in any given situation: that was ultimately an issue for the trial judge, Interflora No 1 followed. In normal circumstances, it was for the judge to determine, unaided by evidence, how an average consumer would react if presented with circumstances said to constitute trade mark infringement. The instant case was one where the results thrown up by search engines on the internet fell within the general description of ordinary consumer services in relation to which a judge could make up his own mind without the need for expert evidence or the evidence of consumers, Interflora No 1 followed. The question therefore was whether the survey evidence was likely to be of real value to the trial judge; nothing in the pilot surveys indicated that he would be assisted by a survey in putting himself in the position of an average consumer, Interflora Inc v Marks & Spencer Plc [2013] EWCA Civ 319, [2013] F.S.R. 26 followed. The mere fact that permission was granted to add the passing off claim was insufficient to justify letting in a survey that would be of no real value to either claim.”