A recent application has been heard in relation to the admission of survey evidence in a trade mark and passing off claim [1]. The claimant owns various intellectual property rights, including a UK and Community trade mark, in respect of the shape of the London black cab. The defendant was proposing to launch a new "Metrocab" taxi. The claimant felt that the defendant’s cab design infringed its intellectual property rights, and instituted proceedings for trade mark infringement and passing off.

The claimant carried out a survey in which 98 Londoners were asked questions after being shown photographs of the competing cabs. One of the questions (Question 5) was: "Do you think there is a connection between the company that makes this vehicle [the Metrocab] and the company that makes this vehicle [the black cab]?" This was followed by a supplemental question, "Why do you say that?".

The claimant sought permission to adduce the survey evidence in its passing off case. The application was refused for the following reasons:

  • no useful purpose would be served by admitting the evidence. The shape of a taxi was not something that was unfamiliar or incomprehensible to a judge, who should be capable of reaching a decision without the need for survey evidence
  • Question 5 was fatally flawed. Fundamental to a passing off claim is the need to show a deception. The question was about a connection but had nothing to say about a deception. The connection in the mind of the consumer did not mean there was also a deception
  • Question 5 was also a leading question
  • the claimant's costs budget amounted to roughly 20 per cent of its total litigation budget. This was significant as the survey evidence was only relevant to the passing off (and not the trade mark) element of the claim. It was also relevant that a disproportionate amount of the trial would be spent considering the survey evidence (which, again, was only relevant to the passing off claim).

It is clear from the decision that in a case concerning both passing off and trade mark infringement claims, where the proposed survey evidence only relates to the passing off element, the court will consider closely how much of the parties' litigation budgets will be spent on the survey and how much of the trial a consideration of the survey evidence will consume.

Recent cases have shown that applications to admit survey evidence in trade mark claims face a high hurdle. The same is true of passing off claims.

Another interesting aspect of the case is the judge's insistence upon deception as being at the core of passing off – not simply connection.

Finally, although obviously a leading question, there is an argument that Question 5 (and indeed the survey as a whole) was directed at the wrong consumers. A typical Londoner hailing a taxi will not be greatly bothered what that taxi looks like – a buyer of a taxi for a fleet, or someone leasing the taxi, by contrast, will be.