Lifestyle Equities C.v v. Royal County of Berkshire Polo Club Ltd

Hearing date: 5 th May 2022

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

This judgment was handed down remotely by circulation to the parties' representatives by email. It will also be released for publication on the National Archives and BAILII websites. The date and time for hand-down is deemed to be Wednesday 25 ^th May 2022 at 10.30am.

Introduction

At the pre-trial review in this case the claimants (LECV or LE) applied to strike out substantial portions from two witness statements served on behalf of the first to fifth defendants (the defendants) for alleged failure to comply with Practice Direction 57AC. Having considered the objections during my pre-reading and the oral submissions at the hearing, I was able to reach a clear view and announced that I dismissed LECV's application for reasons to be given later. This was in part because the PTR was heard in a busy interim applications week and in part due to the arguments raised on LECV's application on the principles applicable to trade evidence in trade mark matters. This judgment contains my reasons.

The context for this application was as follows. LECV own and manage rights in a fashion brand ‘BEVERLY HILLS POLO CLUB’ (BHPC) which features a logo comprising those words arranged around an image of a galloping polo pony and rider with polo mallet raised. LECV allege infringement of trade marks registered in the UK/EU but also in Chile, Mexico, Panama, Peru and the UAE (which I will refer to as the Overseas Territories) and conspiracy to injure by unlawful means. LECV also alleges that certain UK trade marks of which the first defendant is the registered proprietor are either invalid or should be revoked for lack of genuine use.

The action is now concerned only with the first to fifth defendants, who are sued in connection with the use of various signs which feature the words ‘ROYAL COUNTY OF BERKSHIRE POLO CLUB’ (in various fonts). The Royal County of Berkshire Polo Club (RCBPC – the first defendant) was founded by the manager of Pink Floyd, the late Bryan Morrison and his business partner, Norman Lobel, in 1985. His widow (now deceased) was the second defendant. The third defendant is his son and the current chairman of the club. The fourth and fifth defendants were, until recently, the first defendant's licensing agent and its director.

The application concerns two unusual features of this action. The first is apparent from the list of countries in the Overseas Territories. To simplify matters and avoid the need for extensive evidence of foreign law, the parties have agreed that (1) the issue of infringement in each of the Overseas Territories will be tried on the basis that the UK/EU test for infringement applies and (2) infringement will be assessed at the date of the claim form namely 25 ^th June 2018. Any residual matters of foreign law (e.g. the Defendants have pleaded some specific defences under Mexican law) are to be dealt with following the trial, as may be necessary. However, it is axiomatic that when applying the UK/EU test for infringement, the Court will need to be informed about the context of all alleged infringements and in particular the relevant characteristics of the average consumer in each territory.

The second unusual feature is a central part of the Defendants' case. They say the parties are but two of many polo club-themed clothing and accessory brands. They say that some (like the Defendants and Greenwich Polo Club) are merchandising offshoots of real polo clubs, whereas others (such as LECV and Polo Ralph Lauren) are not but seek to leverage the up-market aspirational image of the sport of polo. The Defendants say the relevant market for these products is crowded in each of the territories in issue such that the relevant public must be able to distinguish between the various competing brands.

To those familiar with trade mark disputes, it will already be evident that the Defendants require substantial trade evidence to be able to sustain this type of case. A central issue on this application is whether the way in which the Defendants seek to put various pieces of evidence before the Court is compatible with PD57AC: in essence, is ‘trade evidence’ (of the type previously accepted in trade mark cases) compatible with PD57AC?

Since there is clear authority that PD57AC does not change the rules of admissibility of evidence, the answer to that question appeared to be ‘Yes’. However, in his oral submissions, Mr Michael Edenborough QC appearing with Mr Thomas St Quintin for LECV submitted that the decision of Birss J. (as he then was) at the PTR in Fenty v Arcadia[2013] EWHC 1945 (Ch) ( Fenty) was wrong because s.3(2) of the Civil Evidence Act 1972 had been overlooked. Since I was aware that Fenty had been applied many times and not, so far as I am aware, ever doubted, this argument required some scrutiny. I also observe that this type of argument ought to have been clearly developed in a skeleton argument.

In addition, LECV's application also raised an important more general proportionality issue about PD57AC applications.

PD57AC – applicable principles

These were not really in dispute, even though LECV accused the Defendants of adopting a position that PD57AC either doesn't mean what it says or that it doesn't apply to trade mark cases.

Naturally, I was referred to the helpful summary of the principles in the judgment of O'Farrell J. in Mansion Place Ltd v Fox Industrial Services Ltd[2021] EWHC 2747 (TCC) at [22]–[38]. I will not lengthen this judgment by setting out those paragraphs or restating any parts of PD57AC (PD) or the Statement of Best Practice (SBP), all of which I have had fully in mind. O'Farrell J. referred to the important point established in the judgment of Sir Michael Burton CBE (sitting as a Judge of the High Court) in MAD Atelier International BV v Axel Manes[2021] EWHC 1899 (Comm) (on which more below) that PD57AC does not change the law as to the admissibility of evidence or overrule previous authority as to what may be given in evidence, albeit that it was ‘ obviously valuable in addressing the wastage of costs incurred by the provision of absurdly lengthy witness statements merely reciting the contents of the documentary disclosure and commenting on it.’

I should also mention some helpful observations made by HHJ Stephen Davies in Blue Manchester Ltd v Bug-Alu Technic GmbH[2021] EWHC 3095 (TCC). Having cited from Mansion Place and MAD Atelier, he drew attention to and endorsed two particular points made by O'Farrell J.:

i) First, that ‘ serious consideration should be given to finding a more efficient and cost-effective way forward’, because the application before her had taken a full day to argue. HHJ Stephen Davies added this ‘ Parties in the Business and Property Courts who indulge in unnecessary trench warfare in such cases can expect to be criticised and penalised in costs.’

ii) Second, that whilst the court will be astute to strike out offending parts of a trial witness statement it will not do so where that is not reasonably necessary.

I was also referred to the recent judgment of Fancourt J. in Greencastle MM LLP v Alexander Payne & Ors [2022] EWHC 438 (IPEC), but that was a very different case where the breaches of PD57AC were extensive and significant.

Trade evidence in trade mark and passing off cases

The central issue raised before Birss J. in Fenty v Arcadia[2013] EWHC 1945 (Ch) on 5 ^th July 2013 was whether trade evidence (where suitably experienced people in the trade give opinion evidence about the circumstances in the trade concerned) is expert evidence within CPR Part 35. As he said in [13], Birss J. did not find this question an easy one to address. He referred to s.2(3) of the Civil Evidence Act 1972 and CPR 35.4(1) and (2), noting that there is no definition of what expert evidence is and referring to [9]–[11] from the judgment of Lewison J (as he then was) in O2 Holdings Ltd v Hutchinson 3G Ltd [ 2006 EWHC 601 (Ch), where Lewison J. said:

‘The identification of what is or is not expert evidence is difficult to formulate. I think that in most cases one knows expert evidence when one sees it but to try and formulate an overall test would I think be an impossibility.’

From [19]–[39], Birss J. conducted a thorough review of the various trade mark cases in which trade evidence (of various types) has been received by the courts. Following that review, he identified the following points (the reference to...