High Court refuses permission to carry out survey in black cabs passing-off case

United Kingdom

In The London Taxi Corporation Ltd (trading as The London Taxi Company) v Frazer-Nash Research Limited ([2015] EWHC 1840 (Ch), July 3 2015), an application by The London Taxi Company for permission to carry out a survey and adduce survey evidence in support of its claim in passing off against the developers of a new Metrocab taxi has been refused, on the grounds that the proposed evidence would not have any "real value", nor justify the likely costs involved, in accordance with the tests set out in recent decisions of the Court of Appeal relating to the admissibility of survey evidence in trademark and passing off cases.

The business impact of the decision is as follows:

  • This case has reaffirmed the judgment in Zee v zeebox that the strict tests relating to the admission of survey evidence, as set out by Lewison LJ in Interflora, can be applied to cases in passing off. This is despite the fact that different legal tests are applied to establish passing off, as compared to trademark infringement.

  • The judgment adds to the current body of case law illustrating the increasing difficulty which a party will likely face when seeking to admit survey evidence.

  • The case again highlights the difficulties inherent in crafting a survey questionnaire in such a way as to lead to results which are likely to have "real value" and which comply with the Whitford guidelines. Designing a survey requires very careful consideration. The questions asked, and responses provided, will be carefully evaluated by the judge in determining whether evidence from the survey should be admissible at trial.

  • The judgment also emphasises the conclusions reached by the Court of Appeal in Zee v zeebox, such that:

    • Surveys must reflect the "real life" nature of a passing-off action and the relevant context appropriately. Evidence resulting from any questionnaire which is set out of context, or does not take into account the context in which the relevant public will encounter the sign or mark concerned, is unlikely to be judged admissible.

    • Permission to rely on survey evidence is unlikely to be granted in any case involving mainstream goods and services which a judge will be familiar with and capable of understanding and where the court is unlikely to require, or derive assistance from, survey results.

  • 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 to be dedicated to considering the resulting evidence - particularly in cases where the proposed survey only goes to one element of the claim (eg, the survey only goes to passing off, in a claim which also alleges trademark infringement).

The claimant, The London Taxi Corporation (LTC), is a manufacturer of purpose-built taxis and is the registered proprietor of Community and UK trademarks depicting the shape of two of its vehicle models. The defendants have developed and propose to launch a new version of the Metrocab taxi on the London market. A small number of test models of the new Metrocab have been accepting passengers in London since March 2015, on a trial basis, but the product has not yet been launched for sale.

LTC filed proceedings claiming trademark infringement and passing off against the defendants. In an attempt to support its passing-off claim, LTC carried out a pilot survey of 98 respondents in London, asking interviewees to respond to a set of questions having shown them a photograph of each of LTC's latest model cab and the defendants' new Metrocab taxi.  The pilot survey sought responses from actual or prospective taxi passengers.

One of the key questions in the survey was originally formulated as follows:

"What would you say if I told you that there is no connection between the company that makes this vehicle [showing a photograph of the new Metrocab taxi] and the company that makes this vehicle [showing a photograph of LTC's latest model taxi]?"

Following day 1, this question was modified as follows:

"Do you think there is a connection between the company that makes this vehicle [showing a photograph of the new Metrocab taxi] and the company that makes this vehicle [showing a photograph of LTC's latest model taxi]?"

Respondents were also asked to explain the reasoning for their answers to the modified question set out above ("Why do you say that?").

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 parties focused on the principles and guidance concerning the admissibility of survey evidence which are set out in the decisions of the Court of Appeal in Interflora Inc v Marks & Spencer plc ([2012] EWCA Civ 1501); Interflora Inc v Marks & Spencer plc (No 2) ([2013] EWCA Civ 319); and Zee Entertainment Enterprises Limited v zeebox Limited ([2014] EWCA Civ 82).

Richard Spearman QC, sitting as deputy judge, handed down judgment refusing LTC's application on July 3 2015.

The deputy judge noted that he was not required to make any assessment as to the overall merits of any aspects of the case for the purposes of deciding LTC's application. The focus of his judgment had to be whether the proposed survey would have any real value to the trial judge in determining the issues in question in the passing off case.

The deputy judge held as follows: 

  • 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. The deputy judge made clear that any "propensity to make a connection" between the two products by the respondents did not address the key issue of deception, saying that "first, 'connection' is not a precise concept and, second, it is perfectly possible, and even likely, that respondents may think there is a 'connection' between the companies [making the vehicles depicted in the photographs shown] for reasons which have nothing to do with deception". In this regard, he referred to the judgment of the Court of Appeal in Zee v zeebox as providing support for his view that asking respondents about a "connection" does not really address the issue of deception. Neither did he think that the answers to the further question, requesting reasons for the responses given, supported a finding of deception on the part of the public surveyed - still less deception resulting from any similarity between the two vehicles shown.

  • The key survey question set out above did not comply with the Whitford guidelines.This question amounted to a question which was "leading to an unacceptable degree", and directed respondents into a field of speculation which they would never have otherwise embarked upon had the question not been asked.

  • The matter did not concern a product which was likely to be unfamiliar, nor readily understandable. In other words, hailing a taxi is within the experience of a judge. As such, there was no reason to think that the trial judge would be likely to need, or derive assistance from, the admission of survey evidence in this case.

  • Using two photographs as show material did not come anywhere near to bringing the circumstances of the real world present, as far as possible, in the circumstances of the survey.

  • LTC allowed around 20% of its total litigation budget for the cost of conducting a full survey of 1,000 respondents. The deputy judge considered this sum to be significant and that the value of the exercise would be unlikely to justify the costs involved, more especially given that the proposed survey only addressed the issue of passing off and did not go to the trademark infringement element of the claim.

  • The deputy judge also considered the likely impact on the trial hearing important to his decision to refuse the application. He noted the fact that the estimate of five days for the hearing would likely need to be increased in order to deal with the results of a full survey if the application was permitted, or else that a disproportionate part of the trial would be spent dealing with resulting witnesses.

Joel Smith and Victoria Horsey, Herbert Smith Freehills LLP, London  

Herbert Smith Freehills LLP acts for Frazer-Nash Research Limited and Ecotive Limited, and also acted for zeebox

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