HomeInsightsHigh Court rules after-the-event witness evidence of no confusion admissible in s 10(2) trade mark infringement proceedings

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EasyGroup Ltd trades under the sign “easyGroup” and owns a family of “easy” brands, the most well-known of these being “easyJet”. Others include “easyValue”, “easyLand”, “easyHotel”, “easyCar” and “easyFood”. The “easy” brands are promoted via a website at www.easy.com.

EasyGroup brought proceedings for trade infringement under ss 10(2) and (3) under the Trade Marks Act 1994 and passing off against Easylife Ltd in respect of Easylife’s use of the signs “Easylife Group” and “Easylife” in relation to the sale of household and other miscellaneous goods through a catalogue and online via a website at www.easylifegroup.com.

Easylife denied the allegations and counterclaimed that three of EasyGroup’s trade marks were invalidly registered and/or each of the marks should be revoked for some or all of the goods and services relied on in the proceedings.

EasyGroup applied to strike out and exclude from the evidence six witness statements on which Easylife wished to rely. The witnesses had been identified by EasyGroup as having shown confusion between the names of the parties when communicating contemporaneously, mostly by email, with Easylife. Easylife had then gone back to these witnesses and asked whether, at the time, they really had been confused when the term “easyGroup” or “easy group” had been referred to. Some said that they had not. Easylife wished to rely on these witnesses in order to challenge EasyGroup’s argument on confusion under s 10(2).

EasyGroup said that a series of leading questions had been put to the witnesses by Easylife or its lawyers. It said that the evidence was either survey evidence and/or a witness gathering exercise which had been conducted in contravention of the “Whitford guidelines” (as set out by Whitford J in Imperial Group plc v Philip Morris Ltd [1984] RPC 293) and/or the further guidance set out by the Court of Appeal in Marks & Spencer plc v Interflora Inc [2012] EWCA Civ 1501.

Decision

Mr Hugh Sims QC, sitting as a Deputy Judge of the High Court, said that, as stated in Interflora, when dealing with survey evidence or witness gathering exercises in trade mark infringement proceedings, the issue is not whether the evidence is admissible but the extent to which it produces any evidence of real value for the court on the question of consumer confusion. Further, the cost must justify the benefit. If there is no substantial benefit, then even if the evidence is admissible, it may not justify the disproportionate cost and may be excluded on that ground. In addition, in this case, the fact that the application was being made at an interim stage in proceedings also had to be considered.

In Mr Sims’ view, the six witness statements were neither survey evidence nor a witness gathering exercise that had been conducted in contravention of the “Whitford guidelines” because:

  1. the classic case of survey evidence and/or witness gathering evidence is by a claimant who seeks to adduce consumer evidence, created after the event, in order to support its contention that the average consumer is likely to have been confused; that did not apply here since it was Easylife who was seeking to adduce evidence from witnesses who had been identified by EasyGroup as having, allegedly or potentially, been confused at the time;
  2. here the main purpose of adducing evidence from these witnesses was in order to try to rebut the inference EasyGroup sought to draw from contemporaneous exchanges between the witness and Easylife, which might be said to give rise to an inference of confusion;
  3. given that the original contemporaneous email exchanges and questions and answers posed to those witnesses after the event (including any questionnaire or “survey”) would be before the court, and were not the subject of the strike-out application, the witness statements in question could not be characterised properly as survey evidence;
  4. nor could the statements be said to be a witness gathering or collection programme, as they were principally seeking to adduce evidence as to what the witnesses’ state of knowledge and mind was at the time it was alleged they were confused; and
  5. the evidence was not being adduced solely in relation to a trade mark infringement claim, but also in relation to a passing off claim.

Mr Sims also found that he could not conclude, at this stage in proceedings, that the evidence being adduced by Easylife would have no real value due to the process in which it was gathered. Whether Easylife’s challenge to EasyGroup’s evidence of actual confusion was only a minor point that could be quickly dealt with or whether it had more substance was a matter for the trial judge to determine.

Mr Sims also considered the overriding objective and Practice Direction 57AC on “Trial Witness Statements”. He said that the process used might well reduce the evidential value of the statement, but that on the material before him, he could not conclude at this stage that it was of such a degree that it completely destroyed it.

As for EasyGroup’s complaint that the process had been selective and that certain witnesses who had said that they were actually confused at the time were not being used, Mr Sims noted that that evidence was already before the court. Further, it was admissible and was not going to be excluded. The court would have the full picture and was not going to be misled or misdirected.

Accordingly, Mr Sims concluded that the evidence was admissible and relevant to the issue of confusion. Further, because the evidence had already been obtained and was not a prospective decision as to whether someone should go ahead and survey witnesses, and because Easylife was seeking to adduce the evidence as a defensive measure in relation to a pool of evidence that was already going to be before the court, he should not strike out the statements or rule that it should be excluded. The application was therefore dismissed. (EasyGroup Ltd v Easylife Ltd (formerly Easylife Group Ltd) [2021] EWHC 1705 (Ch) (11 June 2021) — to read the judgment in full, click here.

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