Taxi for the Survey Evidence4 January 2016 by
On 3 July 2015, the High Court of England and Wales dismissed an application by the London Taxi Corporation Limited (trading as The London Taxi Company) to adduce survey evidence in support of its passing off claim against Frazer-Nash Research Limited (“Frazer-Nash”) and Ecotive Limited (“Ecotive”) in relation to the appearance of taxi cabs. Notwithstanding that the test for admission of a survey may be lower in passing off cases in comparison to trade mark infringement cases, Richard Spearman QC (sitting as a deputy judge) refused the application as he did not accept that “the game would be worth the candle” in the present proceedings, i.e. the value of the proposed survey evidence would not justify the likely costs involved.
This decision is in accordance with the principles and guidance concerning the admission of surveys and evidence derived from surveys which are found in three recent Court of Appeal decisions: Interflora Inc v Marks & Spencer plc  EWCA Civ 1501 ("Interflora 1"), Interflora Inc v Marks & Spencer plc (No 2)  EWCA Civ 319 ("Interflora 2") and Zee Entertainment Enterprises Ltd v Zeebox Ltd  EWCA Civ 82 ("Zeebox").
The London Taxi Company, a manufacturer of purpose-built taxis, brought proceedings alleging infringement of certain trade mark registrations relating to various models of its London black cab, and passing off in respect of the appearance of its London black cabs. According to the London Taxi Company, the “common design language” of its vehicles means that those vehicles are “instantly recognisable not merely as taxis but as London black cabs”. In addition, the London Taxi Company alleges that “substantial and valuable goodwill” subsists in the appearance of London black cabs and that that appearance is recognised by members of the public as “denoting the taxis of a single trade source”, i.e. that of the London Taxi Company.
The subject of the proceedings is a new model of Frazer-Nash and Ecotive’s Metrocab taxi (the “new Metrocab”). At the time of the London Taxi Company’s application, the new Metrocab had been publicised and had been trialled on the streets of London for a few months. However, commercial sales of the new Metrocab had not begun and it was unlikely that significant numbers of the new Metrocab would have appeared on the road before the main proceedings went to trial.
As a result, the London Taxi Company had conducted a pilot survey and sought permission to rely on that pilot and to conduct a full survey in support of its passing off claim. The London Taxi Company contended that the survey evidence would be particularly instructive in this case because of its quia timet nature, i.e. any evidence of actual confusion or deception was unlikely to arise before trial (in November 2015).
The show materials
The London Taxi Company’s pilot survey involved conducting interviews with 98 people in London after showing them the following two photographs, C2 and M7. C2 is a photograph of the new Metrocab, taken from Frazer-Nash and Ecotive’s publicity materials. M7 is a photograph of one of the London Taxi Company’s TX4 taxis.
The deputy judge acknowledged the difficulty in the present proceedings of replicating the “circumstances of the real world”, given that the new Metrocab was not yet available for commercial sale and significant numbers of the new Metrocab were yet to appear on the road.
However, there was a “real risk” that the photographs did not show differences between the signs on the parties' vehicles “in a way that replicate[d] the real world sufficiently or fairly” and, as a result, the reliability of the survey responses was “devalued or corrupted accordingly”. The angle at which photographs C2 and M7 were taken meant that “a number of differences (of varying degrees of magnitude) between the appearance of the [London Taxi Company’s] TX4 and the new Metrocab … [were] not apparent”. In addition, the fact that the photographs were taken at night made it more difficult to see other differences than would be the case in ordinary daylight use of the vehicles (notwithstanding that the photographs depicted the parties' vehicles “as some passengers are likely to see them in some circumstances”).
According to the deputy judge, the two photographs did not come “anywhere near to bringing the circumstances of the real world present, as far as possible, in the circumstances of the survey”, stating that the photographs were “a poor substitute for the real world”. As such, the deputy judge considered that the trial judge would, when making his or her assessment, “enjoy a major advantage over a survey based on these two photographs” because such assessment would not be confined to reliance on still photographs.
The Whitford Guidelines
The “Whitford Guidelines” are long established principles for survey evidence, set out in the judgment of Whitford J in Imperial Group PLC v Phillip Morris  RPC 293 and summarised by Lewison LJ in Interflora 1. Guideline (iv) is: “the questions asked must not be leading and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put”.
The key question in the pilot survey questionnaire, Question 5, was originally phrased as: “What would you say if I told you that there is no connection between the company that makes this vehicle [C2] and the company that makes this vehicle [M7]?” It was subsequently rephrased as: "Do you think there is a connection between the company that makes this vehicle [C2] and the company that makes this vehicle [M7]?" and then “Why do you say that?”
However, the deputy judge considered that both versions were “leading to an unacceptable degree” and therefore failed to comply with the Whitford Guidelines. He then went on to apply the dicta of Lewison LJ in Interflora 1, to the effect that surveys that are not fully compliant with the Whitford Guidelines constitute evidence that, even if technically admissible, are not useful and should not be allowed to “distract the focus of a trial”, as “[t]he value of the evidence is severely diminished if not eliminated by a failure to follow the Whitford Guidelines”.
Connection versus deception
In addition to being an impermissibly leading question, the deputy judge considered that the key survey question was “fatally flawed” and that responses to that question were unlikely to be of “real value” for two reasons.
First, the deputy judge’s view was that asking respondents about a "connection" between the companies that made the vehicles did not really address the issue of “deception”, which was central to a case for passing off. According to the judgment in Zeebox (to which the deputy judge referred as support for his view), a reason for degrading the value of a survey and not allowing it into evidence would be if that survey goes to the “peripheral or subsidiary issue” of whether the (relevant) public has “a propensity to make a connection between the mark and the sign”, as opposed to whether there is deception.
Secondly, the deputy judge rejected the London Taxi Company’s submissions that, due to the lack of any actual connection between the London Taxi Company and Frazer-Nash and Ecotive, “anyone who believes there is such a connection must have been deceived into that belief; and such deception must arise because of the similarity in appearance". The deputy judge did not accept these submissions (referring to the results of the pilot survey for support), emphasising the danger of extrapolating from "connection" to "deception", commenting that “it is perfectly possible, and even likely, that respondents may think there is a "connection" … for reasons which have nothing to do with deception”.
The cost benefit analysis
The deputy judge referred to the strict “real value” test laid out by Lewison LJ in Interflora 1 at paragraph 150 (and reiterated more loudly by Lewison LJ in Interflora 2 at paragraph 26) in relation to whether survey evidence should be adduced:
“Only if the court is satisfied that the evidence is likely to be of real value should permission be given. The reliability of the survey is likely to play an important part in that evaluation. Even then the court must be satisfied that the value justifies the cost."
According to the London Taxi Company, a full survey of 1,000 persons would cost just over £100,000, comprising about 20% of its total litigation budget. The deputy judge considered these costs to be “significant whether viewed in absolute or proportionate terms”, especially as the survey was relevant only to part of the case (i.e. passing off). As such, the deputy judge doubted that the value of the survey would justify those costs, even if it had satisfied the criterion of being reliable.
The deputy judge also gave significant weight to the likely impact on the existing five day trial estimate. Although it was difficult to predict how many respondents would be called as witnesses if a full survey had been allowed, the deputy judge thought it likely that the cross-examination of the respondents, as well as the time spent on the resulting expert and factual evidence, would result in the trial estimate being increased, or a disproportionate part of the trial being spent on those matters.
This judgment is an example of robust application of the ‘new’ standards for survey evidence. The London Taxi Company sought to argue that, essentially, a leading question had to be asked to understand what the respondents really thought, but this decision demonstrates that including leading questions to gain meaningful answers may simply undermine the exercise.
The judge’s comments on the costs/benefits – that even if not otherwise objectionable, the costs would have outweighed the benefit – may signify a wind change. In Enterprise, the costs of the survey, which did no more than confirm a view the judge was ‘minded’ to reach anyway, exceeded those proposed in this application. If such costs are seen as significant in real terms (not just in proportion to the overall costs), so as to ‘not be worth the candle’, the question is when those (or even greater) costs would ever be seen as justified, other than in cases involving very niche goods or services.
Overall, this judgment demonstrates that, outside of more specialist types of goods and services, with which the judge is not likely to be familiar, (such as Zee TV), obtaining permission to rely on survey evidence is likely to be very difficult to achieve.
Published with minor amendments in the IP Forum, Issue 103: December 2015