October 30, 2019

Facts

Both parties in this case provided online printing services, particularly for photographs, and both used dedicated mobile apps to sell their services.

Planet Art launched in the UK in January 2014. It offered its services exclusively via mobile apps for iPhone and Android. Its main app was called FREEPRINTS. It also used the words “FreePrints”, in colour and black or white, on its website.

In late 2017/early 2018, Photobox launched a dedicated mobile app offering a monthly allowance of free prints. From April 2019, the app was called PHOTOBOX FREE PRINTS.

Planet Art issued proceedings against Photobox Ltd for passing off.

Following a failure to secure an interim injunction against Photobox pending trial, Planet Art instructed a pilot market research survey to identify customer reactions to various descriptions of the Potobox Free Prints and FREEPRINTS brands. It then issued an application for permission to adduce pilot survey evidence and to carry out a full survey based on the pilots.

Decision

Ms Amanda Tipples QC, sitting as a Judge of the Chancery Division, noted that it is well established that a court should not let in evidence of this kind unless the party seeking to call that evidence satisfies the court that: (i) the evidence is likely to be of real value; and (ii) the likely value of the evidence justifies the cost.

Referring to Enterprise Holdings Inc v Europcar Group UK Ltd [2014] EWHC 2498 (Ch), Ms Tipples noted that the court must consider whether it is likely that the survey will be held at trial to be a valid survey. If not, then, as a robust gatekeeper, the court must rule that it cannot be admitted. Further, the survey evidence must comply with the Whitford Guidelines set out in Imperial Group Plc v Philip Morris [1986] RPC 293, as summarised in Marks and Spencer Plc v Interflora Inc [2012] EWCA Civ 1501,

In addition, for the survey to be balanced, Ms Tipples said that the questions asked must not be leading and must not direct the person answering the question into the field of speculation upon which that person would never have embarked had the question not been put. Moreover, passing off is “a real world cause of action and the circumstances of the real world need to be present so far as possible in the survey circumstances” (Zee Entertainment Enterprises Ltd v Zeebox Ltd [2014] EWCA Civ 82).

Finally, Ms Tipples noted that the fact that speculation is inherent in surveys is, “precisely why surveys should be admitted into evidence only in special cases” (Zeebox) and the general run of cases tend to show that surveys have very little value.

Ms Tipples found that Planet Art’s surveys were of no real value to the court on the question of Planet Art’s goodwill because of the descriptive nature of the FREEPRINTS name and the fact that the survey questions did not focus on that issue. The responses to the questions were therefore not inherently probative of brand recognition, still less that the term FREEPRINTS had acquired a secondary meaning.

As for misrepresentation, given her finding on goodwill, Ms Tipples said it was difficult to see how that defect could be overcome to deal with the issue of actionable deception. That was a fundamental flaw that undermined the whole survey, Ms Tipples said.

Further, Ms Tipples said, the survey questions were not asked in the real world context, which was purchase by customers of the apps from the App Store. This lack of proper context was another reason why the surveys were of little value.

Ms Tipples also found that the questions were leading and drew the respondents into speculation. In particular, Ms Tipples considered the question “Why do you say that?” to be leading, as it had been found to be in The London Taxi Corporation v Frazer-Nash Research Ltd [2016] FSR 7. Therefore, the surveys did not comply with the Whitford Guidelines.

Ms Tipples also said that the introduction of survey evidence would inevitably have a knock-on effect on the length of trial and would mean that the case would have to be taken out of the shorter trial scheme, thereby increasing costs. In Ms Tipples view, the utility of the survey evidence did not justify the costs.

Finally, in the pilot survey evidence did not assist the court in addressing those weaknesses identified at the interim injunction stage, following which the pilot had been commissioned.

The application was dismissed. (Planet Art LLC v Photobox Ltd [2019] EWHC 2436 (Ch) (2 August 2019) — the judgment is available in full on the Lawtel website at Lawtel.com).