High Court Rejects Use of Survey in Passing Off Case

In The London Taxi Corporation Ltd (trading as The London Taxi Company) v Frazer-Nash Research Limited and Ecotive Limited [2015] EWHC 1840 (Ch.), 3 July 2015, was an application by the London Taxi Company for permission to carry out a market research survey and adduce evidence in support of their claim for a common law tort action in passing off.

The action, brought against the developers of a new environmentally friendly Metrocab taxi, was refused by the High Court on the grounds that the proposed evidence gathered from their survey would not have any "real value", nor justify the likely costs involved. This is in accordance with the tests set out in a recent Court of Appeal decisions relating to the admissibility of survey and market research surveys in trade mark and passing off claims.

This case has re-affirmed the judgement in Zee Entertainment Enterprises Limited and others v zeebox Limited [2014] EWCA Civ 82, Court of Appeal, England and Wales, 24 January 2014 (hereafter Zee v Zeebox). In that case, The Court of Appeal refused permission to adduce survey evidence in the first case to come before it on the admissibility of survey evidence in a passing off evidence since the landmark judgements of the Court of Appeal in Interflora v Marks and Spencer Plc.

Legal Context

In Interflora Inc v Marks and Spencer Plc [2013] EWCA Civ 319, Lewison LJ laid out a strict test in relation to adducing survey evidence in trade mark cases, in particular that a "judge should not let in evidence of this kind unless the party seeking to call that evidence satisfies him that (a) that it is likely to be of real value; and (b) that the likely value of the evidence justifies the cost". However, some uncertainty remained after this case as to whether the tests set out in them could be extended to survey evidence in passing-off cases, given that Lewison LJ had made certain obiter comments about different considerations coming into play in relation to passing-off cases, since it was a necessarily different legal question. This is despite the fact that different legal tests are applied to establish passing off, as compared to trade mark infringement.

The Court will take into consideration what proportion of the parties' costs budgets will be spent on the survey exercise and how much of the trial is likely to have been dedicated to considering the resulting evidence.

Background

The Claimant, The London Taxi Corporation (LTC), is a manufacturer of purpose-built taxis that are driven mostly in London and is the registered proprietor of Community and UK trade marks depicting the shape of its taxi models. The Defendants have developed and propose to launch a very similar version of the Metrocab taxi, on the London market. LTC have filed proceedings claiming that the defendants have infringed their trademarks and they are also claiming passing-off. To support their passing off claim, the LTC carried out a pilot survey of 98 passengers in London, asking them to respond to a set of questions and showing them photographs of LTC's latest taxi models and the defendant's latest Metrocab taxi model.

LTC applied to the Court for permission to:

adduce in evidence the results of the pilot survey, in support of its passing off case;
carry out a full survey of either 500 or 1,000 respondents, in the same form as the pilot survey, and to adduce the results of the full survey in evidence;
and rely on evidence obtained from each of the pilot and full surveys by using the signed, completed questionnaires as witness evidence, in respect of certain respondents.

The modified survey question set out above was the most important question in the proposed survey, but whatever answers were given to this question (in either of its forms) were not likely to be of "real value", in respect of determination of "the central issue of deception" to a case for passing off. In this case he referred to the judgement in Zee v zeebox as providing support for his view that merely asking respondents of the survey of a 'connection' between the similarity of vehicles did not address the issue of deception.

The key survey question did not comply with the Whitford guidelines. This question was "leading to an unacceptable degree" and misguided the respondents.

The Deputy Judge also considered the likely impact on the trial important to his decision to refuse the application. He stated that the estimate of five days would inevitably need to be increased in light of a full survey had the application by LTC been permitted, or else that a disproportionate part of the trial would be spent dealing with resulting witnesses.