Broadcasters - Costs capping orders - Deception - Unfair advantage - Trainee solicitors

(1) A&E Television Networks LLC

(2) AETN UK v Discovery Communications Europe Ltd: ChD (companies ct): 20 April 2011

The applicant broadcasters (X) sought permission to admit the results of a pilot survey as evidence in claims for trade mark infringement and passing off against the respondent broadcaster (D) and to conduct a further survey.

X had conducted the pilot survey before commencing the claims. X sought to introduce survey evidence to establish issues of confusion, unfair advantage and likelihood of deception. X applied for (i) permission to serve witness statements from witnesses identified from responses to the pilot survey and/or Civil Evidence Act notices relating to such responses;

(ii) permission to administer questionnaires to members of the public in the forms proposed for a main survey and to serve written statements from witnesses identified from the responses and/or Civil Evidence Act notices relating to such responses. X proposed to conduct the main survey using trainee solicitors.

D contended that (1) some of the proposed questions in the proposed survey were objectionable and that the use of trainee solicitors to conduct the survey would be more expensive than using market research practitioners; (2) the pilot survey should not be admitted in evidence as X had not sought permission to conduct the surveys.

X submitted that they should be allowed to use trainee solicitors as market researchers might be incentivised to conduct the survey in a rushed manner, lead interviewees unacceptably or approach people on their own databases rather than in public places.

Held: (1) The first and main task of the court when considering an application for permission to conduct a survey was to prevent a survey going forward when it could be seen with sufficient clarity that it would produce results which would not be relevant or sufficiently probative to make considering it worthwhile, esure Insurance Ltd v Direct Line Insurance Plc[2008] RPC 5 TMR and UK Channel Management Ltd v E! Entertainment Television Inc [2008] FSR 5 ChD applied.

It was not clear that the questions were valueless, misleading or otherwise inadmissible.

However, the reasons put forward for using trainee solicitors were not convincing and indicated a general distrust of the techniques of market research practitioners.

Therefore, permission was granted for the survey to be conducted as drafted subject to a costs capping order to the effect that if X chose to use trainee solicitors, then in the event that X were entitled to recover the costs of the survey or any part of it they would not be entitled to recover any more than the costs of a reasonably priced and respected market research organisation.

Accordingly, permission was granted for X to administer questionnaires and to serve written statements from witnesses identified from the responses.

However, it would have been premature to have granted permission to serve Civil Evidence Act notices in relation to any such responses (see paragraphs 26-28, 31, 35-39 of judgment).

(2) The pilot survey was not to be automatically disqualified on the basis that permission to conduct the survey was not obtained beforehand as it had been conducted before the action was commenced.

However, it was not proper to allow relief in circumstances where X was seeking to serve witness statements of particular but unidentified witnesses who had been identified as a result of the pilot survey.

X could not obtain an advanced indication that all such evidence would be admissible.

Similarly, the request for permission to serve Civil Evidence Act notices was premature and unparticularised.

Accordingly, with respect to the pilot survey, it could not be said that witness evidence flowing from it would be inadmissible or worthless; and it would not be right to be seen to be blessing the service of evidential material from those surveys by sanctioning the service of witness statements or Civil Evidence Act notices flowing from the survey (paragraphs 45, 47, 52).

Application granted in part.

James Mellor QC (instructed by SNR Denton UK) for the applicants; John Baldwin QC, Charlotte May (instructed by Burges Salmon) for the respondent.