• In a preliminary application, the High Court has considered the factors for admitting public survey evidence into the trial of a passing off claim
  • The application to admit survey evidence was refused, because a trial judge would not need it; the suggested questions were flawed; it was too expensive; and it would lengthen the trial to the extent that the existing trial date would be jeopardised 

What's it about?

This is a case in the High Court between The London Taxi Company (LTC) and Frazer-Nash (FN). LTC who make the traditional black cab, sued FN for trade mark infringement and passing off. LTC owns two trade marks depicting its black cab and claimed that FN's new Metrocab both infringes those marks and passes off its own cab. LTC's claim is effectively that the Metrocab is a deceptive attempt to trade off LTC's goodwill in the appearance of the black cab.

LTC had obtained pilot survey evidence by asking 98 Londoners various questions that sought to establish its passing off case. For example, it showed people two photographs (one of its taxis and one of the FN metrocabs) and asked them whether they thought there was any connection between the companies that made both the taxis. LTC applied to the Court for permission to rely at trial on the evidence of both the pilot survey and an intended larger survey of up to 1000 persons which it wanted to commission.

The Judge refused the application for the following reasons. Firstly, he did not think that the facts of the case were such that the trial Judge would require a survey, or find it helpful in reaching his decision about the case. Secondly, the questions that had been asked in the pilot survey were flawed, as some questions were leading and others did not address the issue of whether there was deception, which is a key ingredient of a passing off claim. Thirdly, the projected survey costs of around £100,000 were disproportionate in relation to the costs of the matter as a whole. Finally, allowing witness evidence from the survey to be heard at trial would have significantly increased the length of the trial beyond its original estimated length, to the extent that the existing trial date would have been jeopardised.

Why does it matter?

This decision demonstrates that it is becoming increasingly difficult to obtain permission to admit survey evidence into the trial of IP claims. In most IP claims where there is no specialist technical issue involved, it is unlikely that a Court is going to agree that expensive and time consuming survey evidence will be of sufficient value to a trial judge to justify its procurement.

Now what?

In this specific case, the trial Judge will have to reach a decision without the assistance of any survey evidence. As there are likely to be very few new Metrocabs on the streets by the date of the trial, it will be hard for LTC to show that there is any actual confusion between the two cabs.

In future IP cases involving passing off or trade mark infringement where confusion or deception needs to be shown, a claimant will have to think very carefully about whether it is worth incurring the cost of a survey to try and prove its case.

The London Taxi Corporation Ltd (t/a as The London Taxi Company) v Frazer-Nash Research Ltd [2015] EWHC 1840 (Ch), 3 July 2015