L'Oréal SA and Others v Bellure NV (Case C-487/07)

JurisdictionEngland & Wales
CourtChancery Division
JudgeMR. JUSTICE PETER SMITH,Mr Justice Lewison
Judgment Date04 October 2006
Neutral Citation[2006] EWHC 1503 (Ch),[2006] EWHC 2355 (Ch)
Docket NumberCase No: HC 03 C04344,HC03C04344
Date04 October 2006

[2006] EWHC 1503 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Before

Mr. Justice Peter Smith

HC03C04344

Between
L'oreal S.A. & Ors.
Claimants
and
Bellure N.V. & Ors.defendants

Miss J. Reid (instructed by Baker & McKenzie) appeared on behalf of the Claimants.

Mr. T. Moody-Stuart (instructed by Addleshaw Goddard) appeared on behalf of the First and Fourth Defendants.

(As approved by the Judge)

MR. JUSTICE PETER SMITH
1

This is my ruling on the first, fourth and seventh defendants' application under heading B of para.1 of Mr. Moody-Stuart's skeleton. They seek the skeleton arguments, statements of case, witness statements and expert reports deployed by the claimants in their Defence in the earlier proceedings. There is a closely related subject matter to that of the present action, the claimants apparently adduced evidence and ran arguments inconsistent with the position they have adopted in the present claim.

2

The basis for the application is set out in Part C of their application. It is clear that the grounds for the application, in my view, is that they want to obtain this evidence because, as they say in Item 3:

“Any inconsistency in the L'Oreal position will be relevant in assessing the strength of their statement of case and the credibility of their witnesses”.

3

There are a number of matters which they seek under this head. I do not see that the skeleton arguments in the previous case can have any relevance to this action. The action is for infringement of trademarks and passing off and the application relates to an apparent stance that L'Oreal took when they were sued in the Debonair proceedings that evidence showed that their products were of superior quality and that there would be no prospect of confusion with the claimants' products in that action because they were of an inferior quality. That is a stance which they do not appear to take in the present action. Indeed, their case is on the basis that there is likely to be confusion despite the defendants' contention that their products are sold in a market of different quality. There is, in my view, as I say, no evidential weight or relevance that can be attached to the skeleton arguments in the previous action. None of it was deployed, and, as will be seen in a further ruling that I make, there was a settlement of that action.

4

The witness statements are covered by CPR 32.12, which provide that:

“Except as provided by the rule, a witness statement may be used only for the purpose of the proceeding in which it is served”.

There are three exceptions. The first one is where the witness gives consent to the use of it; the court gives permission, or the witness statements have been put in evidence at a hearing in public. No witness has given consent as such and none of the evidence has been deployed in public.

5

It seems to me that in relation to large parts of the defendants' application they give the game away in their application notice. In reality they are really seeking the material primarily in an attempt to discredit the witnesses that L'Oreal deploy in this action. I do not accept that that is a proper basis for seeking disclosure, and in that context I rely upon the judgment of the Court of Appeal in Thorpe v Chief Constable of Greater Manchester Police [1989] 1 WLR 665. That decision was referred to in the House of Lords in O'Brien v Chief Constable of South Wales Police [2005] 2 WLR, at para.49. What is interesting is para.53 of that report, where their Lordships reject the similar fact principle as to be found as to admissibility in criminal cases, but simply apply the test of relevance and the test of admissibility of similar fact evidence in a suit, and such evidence is admissible if it is potentially probative of an issue in the action. I do not see that the witness statements are relevant beyond an attempt to discredit L'Oreal's witnesses in this case, and I would refuse that application in that respect also.

6

Equally, there is an expert report that was deployed by L'Oreal in that action of a Mrs. Johnson. She is not a witness in the present case and that too, in my view, is sought simply in the hope that they would be able to obtain material for the purpose of discrediting L'Oreal's case.

7

There is a further witness, however, and that is the survey witness, a Mr. Barter. He is giving evidence in this case and his evidence, as I understand it, will rely upon surveys that he has obtained. We have a glimmer in paras.64 and 65 of L'Oreal's skeleton argument, which has been adduced, in the other proceedings which suggests that he prepared a report there which was critical, on its face, of the use of survey material in that action. This, in my view, is different. It seems to me that given that indication in the skeleton argument, this is going to be gone into at trial. The defendants, in my view, whatever I might rule, will not take this point lying down. They do not at present intend to call their own expert in this area but that does not prevent them from obtaining material, not merely to affect the credibility of Mr. Barter but whether or not his opinion should be accepted on the evidence which he adduces at this trial. It is inevitable that if I refuse the application they will nevertheless put to him the skeleton argument. That also, I have no doubt, will be prefaced by questions put to him under CPR 35 designed to force him to consider his earlier report. He will not, of course, be capable of being deflected from that by the claimants because, as an expert, he owes a duty to the court to consider these matters and merely because that is inconvenient to the claimant would not be a reason for him departing from his duty fully to consider everything when he delivers his report. That is likely to lead at some stage the judge to enquire about these reports and, if the judge is told that I have refused production of those reports, the judge might sigh and say, “That is the end of it”. He might entertain an application for the production of their reports. The third possibility is that the case proceeds in an unsatisfactory way with the reports tantalisingly kept out of view, and everybody being left, apart of course from the claimants, not knowing what those reports said. It is possible that a robust judge might follow the cases, such as Lennox Lewis v Eliades, and conclude that the claimant has something to hide, but I really wonder whether, under the CPR and in the object of ensuring that everybody at least has a fair, equal trial as far as is possible, one should force a judge of the trial into this situation and force an expert into this situation and leave it all to be left by inference if it can be avoided.

8

It seems to me that in relation to Mr. Barter's report the defendants' application goes beyond mere credit. It goes to his opinion on an important aspect of the case. As such, in my view, that report is therefore disclosable.

9

Mr. Moody-Stuart suggests that under CPR 35 the regime that applies to witnesses, under CPR 32, and, in particular, the restriction of 32.12, does not apply. That is a difficult question to answer. It seems to me that the position before CPR was summarised in the case of Bourns Inc v Raychem (No.2) [1999] FSR 641 at p.676, where the service of report waived the privilege. I see nothing in the CPR that takes that away. In the case of witness statements it is taken away by virtue of the provisions of CPR 32.12. I am not persuaded by Miss Reid's submissions that the experts' reports under CPR 35 are governed by the regime under CPR 32. In my view, they are different regimes with similarities but significant differences. First of all, the purpose of the evidence under the two regimes is entirely different. The witness statement regime is designed to allow a party to adduce their evidence in a particular way with a statement of truth attached to them. An expert report, whilst it is tendered on behalf of a party, is nevertheless tendered to the court to assist the court. The expert in his report gives a declaration which is far removed from the mere statement of truth that the witness gives. Further, his evidence is not called a witness statement. It is called a report. I do not believe that the regimes are merged together under CPR 32. They are separate. Therefore, in my view, Mr. Moody-Stuart is quite right that there is no rule or privilege which the claimant can claim in respect of a report once it has been disclosed in an action. Of course that does not make it disclosable in this action because for it to be disclosable in this action it must nevertheless be relevant to this action.

10

I have concluded that Mr. Barter's report is relevant to this action for the reason that I have said. I do not conclude that any of the other material is relevant. Furthermore, one of the main objects of the Civil Procedure Rules was to limit disclosure so as to ensure that parties were not required to go beyond what is reasonable. It seems to me that disclosure should be limited to his report. The production of that should not be a difficult exercise for the claimants because they have produced that report for the purposes of the previous litigation. It seems to me that that is more than enough for the defendants to be able to satisfy themselves that they have material to put to him in this case to test his opinion in this case. That is how I will limit that order, to the report itself. I make it clear, for the avoidance of doubt, that does not, for example, extend to the large number of surveys he considered as regards the other side's evidence in the case. I limit it solely to his report prepared for L'Oreal for the...

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