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27 March 2018
Context

There have been a number of reported cases in recent years which suggest that it is increasingly difficult for parties to rely upon survey evidence in intellectual property cases. That is particularly so given the increasing focus placed upon active case management by the Court, as part of wider reviews of the litigation landscape.

The recent decision of Mr Justice Birss in Glaxo Wellcome UK Ltd & Anr v Sandoz Ltd & Ors [1] (“Glaxo”) provides pragmatic guidance on how survey evidence will be evaluated by the Court.

Background

Judges trying IP cases are often suspicious of evidence obtained through surveys. As noted by Lord Oliver in Reckitt & Colman Ltd v Borden Inc [2] almost 30 years ago, “so much can depend upon the conditions in which surveys are conducted, the format of the questions posed and the manner in which they are asked."

The Court of Appeal made clear in Interflora 2 [3] that surveys are something which should be dealt with robustly, with Lewison LJ stating “Let me say it again, but more loudly. A judge should not let in evidence of this kind unless the party seeking to call that evidence satisfies him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost.”[4]

It is against that background that Mr Justice Birss came to assess the Claimants’ request to rely upon survey evidence in Glaxo. This is part of a long running case between the two large medical companies and their associated entities, relating to use of the colour purple on inhalers. The Court of Appeal had already decided, in agreement with the decision at first instance, that the trade mark was invalid. Permission to adduce expert evidence in the present passing off case had also been refused.

Survey evidence had been gathered previously by the Claimants to suggest that their colour trade mark had acquired distinctiveness, with such evidence admitted into the IPO proceedings. It is particularly important to note that the market for the parties' respective inhalers is specialised, as is often the case in matters involving the medical industry. Here the relevant products are sold on prescription, which means that the medical practitioners who prescribe the inhalers have enhanced importance in relation to the distinctiveness of the get-up relied upon and the misrepresentation alleged.

Two surveys were conducted, on each occasion doctors and pharmacists who make prescription decisions were interviewed. The basis of the surveys was a blank rectangle of the relevant shade of purple, followed by questions. The Claimant therefore wished to rely on such evidence in support of its case on distinctiveness (not misrepresentation) in the High Court claim.

The Defendants suggested that the surveys should not be admitted, primarily because: 

a)     they used a square of colour rather than the colour on the inhaler and therefore, it was submitted, ignored the application of the colour and other elements of the product;

b)     patients themselves were not interviewed;

c)     the surveys were structured, it was said, to include leading questions;

d)     GPs were dealt with per practice, rather than taking into account the number of practitioners in each surgery;

e)     the costs of admitting the surveys at approximately £500,000 were disproportionate;

f)       the guidelines for surveys outlined by Whitford J in Imperial Group plc & Another v. Philip Morris Limited & Another [5] had not been followed.

Mr Justice Birss dismissed such objections and allowed the surveys to be relied upon. In particular, the Court stated that using a square of colour was prudent because the colour is present on packaging and marketing information as well. The Judge also stated that it was sensible for patients not to be interviewed, given how the products were prescribed. In relation to costs, the Court acknowledged that this was a large sum, but felt that in the context of this litigation it was justified.

In relation to the other objections, the Judge held that these could be dealt with at trial. It was also made clear that the decision was, in effect, an exercise of the Court’s case management function as the surveys had already been carried out.

Analysis

Our team have been involved in a number of cases involving intellectual property rights in the medical industry. The majority of those have involved careful identification of the customer, average consumer, or informed user depending upon the precise right relied upon.

The decision in Glaxo gives useful guidance for parties seeking to adduce survey evidence, particular where the product in question is not selected directly by the end user. In this case, it is difficult to see how anyone other than those making the prescribing decision would be the relevant party to a survey in a passing off case. By classifying this as a case management decision, this should avoid the appeals involved on these issues, such as in the Interflora case.

Further, the decision makes clear that even where the costs of including the survey are considerable, the Court will take a pragmatic view and still allow such surveys if overall the proceedings justify inclusion. It will also be interesting to see if parties now seek to widen the use of pilot surveys encouraged by the Court of Appeal in Interflora or include surveys commissioned for other purposes, in an attempt to persuade the Court that inclusion of this evidence is really a case management decision.

For further information on this topic or IP rights in the medical industry generally, please contact Michael Forrester on michael@brandsmiths.co.uk


 [1] [2017] EWHC 3196 (Ch)   [2] [1990] 1 All E.R. 873   [3] [2013] EWCA Civ 319   [4] Ibid per Lewison LJ at §5   [5] [1984] RPC 293