The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now considered the value of the claimant’s survey evidence.
Held: The claimant had failed to produce evidence of sufficient quality to support its claim, which therefore failed.
Peter Smith J said: ‘The exploration of the gathering of the secondary evidence demonstrated the whole fallibility of this type of evidence . . I was concerned particularly for example that several witnesses were cold called after the initial interview. While they were speaking on the telephone the relevant solicitor took notes on what was being said. Only when that was finished did she reveal that the questions were for litigation. I have no doubt most people thought they were responding to a customer survey questionnaire. Some witnesses expressed the view that they were unwilling to give evidence. One . . said he was unwilling to give evidence because it would cause trouble with his employer . .
This case demonstrates the need for solicitors preparing witness statements to curb their enthusiasm in seeking to obtain the best for their clients. It must not be forgotten that witness statements are merely a replacement for evidence which a witness previously used to give live in chief. It is intended to be the factual evidence of the witness in his own words. Too often witness statements are drafted by solicitors who put words in their mouth to achieve a better result. Witness statements can then be changed from drafts to a later stage without the witness understanding the significance of the change.’
Peter Smith J
[2013] EWHC 109 (Ch)
Bailii
England and Wales
Citing:
Cited – Turton v Turton 1889
The plaintiff sought to restrain the defendant from trading under the same name.
Held: The possibility of blunders by the public did not to disentitle the defendant from trading in his own name even though the plaintiff had for a long time . .
Cited – Reddaway and Co Ltd v Banham and Co Ltd HL 1896
The plaintiff manufactured and sold Camel Hair Belting. The defendant also began to sell belting made of camel’s hair in the name of Camel Hair Belting. The trader claimed a right in the term ‘Camel Hair’.
Held: The term was descriptive. Where . .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – British Vacuum Cleaner Co Ltd v New Vacuum Cleaner Co Ltd 1904
The plaintiff sought to restrain what it said was passing off by the defendant. The test to be applied in passing-off claims is whether there is such a close resemblance between the names as to be calculated to deceive. This is a question of fact. . .
Cited – Imperial Group Plc v Philip Morris Ltd ChD 1984
A brand name used in association with product get-up is likely to be a feature upon which customers rely, especially if the get-up combines features in common use in the trade with a distinctive brand name. Whtford J set out guidelines for the . .
Directions – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 20-Apr-2011
Case management decision in trade mark infringement action, on the extent to which the court should give permission for a survey to be conducted, and for evidence resulting from previous surveys to be admitted.
Held: Mann J gave the claimant . .
Cited – UK Channel Management Ltd v E! Entertainment Television Inc and Another ChD 10-Oct-2007
. .
Cited – Neutrogena Coroporation v Golden Ltd ChD 1996
Jacob J discussed the value of survey evidence in passing off cases: ‘Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to . .
Cited – Neutrogena Coroporation v Golden Ltd CA 1996
The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. . .
Cited – Group Lotus Plc and Another v 1Malaysia Racing Team Sdn Bhd and Others ChD 27-May-2011
The claimants disputed the right of the defendants to use their mark ‘Lotus’ in the name of their Formula 1 racing team.
Held: There are exceptional cases when goodwill can be shared. . .
Cited – Specsavers International Healthcare Ltd and Others v Asda Stores Ltd ChD 30-Jul-2010
The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 09 November 2021; Ref: scu.470705