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Judge says expert witnesses are rarely useful for trade mark disputes


A judge has said that expert evidence in trade mark disputes is rarely likely to be relevant when it comes to deciding if a consumer will be confused by two supposedly similar marks.

In adjudicating a dispute over insurance advertising, Lady Justice Arden said that hearing officers should mostly use their own judgment in cases unless the marks operated in highly specialised markets.

If third party evidence about consumer confusion was needed, she said, then it should come from consumer surveys, not from experts.

While stopping short of saying that expert evidence should never be used, Lady Justice Arden did say that it should be restricted to "exceptional situations".

She was ruling in a dispute over trade marks in the insurance market. Direct Line had a trade mark for a telephone on wheels and opposed esure Insurance's application for a trade mark for a computer mouse on wheels, claiming that it would be confusingly similar for consumers.

A hearing officer of the UK Intellectual Property Office (UK-IPO) said that in his opinion there would be confusion in the minds of consumers between the wheeled telephone and the wheeled mouse, and rejected the application for esure's mark.

The High Court said that the hearing officer was wrong to conclude that based on his own opinions. The Court of Appeal has in turn overturned that decision, saying that where a trade mark was aimed at the general public, the hearing officer was entitled to form his own opinions on confusion.

"What the hearing officer had to determine was what the average consumer would have thought of the two marks and whether they would have confused him," said the ruling. "The services sold by the parties were identical and were of a kind familiar to members of the public. In those circumstances, I see no reason why the hearing officer should not have decided the issue of similarity on his own in the absence of evidence apart from the marks themselves and evidence as to the goods or services to which they were, or, in the case of esure's mark, were to be applied."

The ruling also has implications for expert witnesses who are sometimes called on to give a view of how marks would be perceived in certain industries and what the likelihood of confusion for consumers would be.

"Given that the critical issue of confusion of any kind is to be assessed from the viewpoint of the average consumer, it is difficult to see what is gained from the evidence of an expert as to his own opinion where the tribunal is in a position to form its own view," said Lady Justice Arden. "That is not to say that there may not be a role for an expert where the markets in question are ones with which judges are unfamiliar."

The ruling quoted a judge in previous case involving The Economist newspaper, in which the judge said that the views of experts was inadmissable, that they "are experts in the market, not on confusing similarity".

Lady Justice Arden said that if a hearing officer or judge needs help in deciding on consumer confusion, a survey of consumers should be used. "If more cogent evidence of customer perception is needed, the traditional method of consumer surveys must…carry more weight and is to be preferred," she said.

She said that consumer surveys were not perfect and could be rendered useless by the asking of the wrong questions. She recommended that anyone conducting a survey seek the court's instructions on the scope or methodology of a survey to ensure that it is useful.

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