Lyle & Scott Ltd v Primark Stores Ltd
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE LINDSAY |
| Judgment Date | 17 May 2007 |
| Neutral Citation | [2007] EWHC 1549 (Ch) |
| Date | 17 May 2007 |
| Court | Chancery Division |
| Docket Number | No. HC07C01151 |
[2007] EWHC 1549 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Mr. Justice Lindsay
No. HC07C01151
Ms. M. Heal (instructed by Martineau Johnson) appeared on behalf of the Claimant
Mr. R. Wyand QC and Mr. S. Malynicz (instructed by Addleshaw Goddard) appeared on behalf of the Defendant
(As approved by the Judge)
I have before me an application notice in the matter Lyle & Scott Limited, claimants, and Primark Stores Limited, the defendants. Ms. Heal appears for the claimants and Mr. Wyand QC for the defendants.
A preliminary issue arises as to the admissibility of a particular class of evidence. The case before me is mounted under heads (a) (b) and (c) of the regulation at 9.1. The case concerns the use of an eagle mark by Lyle & Scott, who apply it to high quality clothing. Primark, it is said by the claimants, apply an identical or similar mark to a very much cheaper class of clothing. I do not at this stage need to go into the case any further than that.
Confusion becomes material, both under (b) and (c) of the three separate ways in which the case is put, and confusion is asserted by the claimants by reference to one dealing only, I apprehend, made, I think, by the managing director or certainly a senior officer of Lyle & Scott, who walked into Primark and noticed what he took to be similar goods marked with similar or identical marks to the Lyle & Scott mark, and therefore the claimant asserts a degree of confusion relevant both to (b) and (c).
The matter came before Mr. Justice Blackburne at an earlier stage, not very long ago, when the evidence had only recently been received by the defendants and Mr. Wyand asked for time to put in further evidence. He explained to the learned judge that two classes of evidence were sought to be added. An important class was as to when the disputed marks were first used by Primark and the second class of evidence, the one material to what I am now considering, concerned time to be afforded in which more responses from members of the public could be put in evidence than the eight or so cases which were already in evidence and which therefore were already available to the learned judge. Mr. Justice Blackburne took the view that the defendant ought to be given more time in which to complete its evidence and Mr. Wyand tells me, and Ms. Heal does not query this, that at that stage the claimant made no objection to the addition of more evidence of the class consisting of more responses from members of the public.
I think there is force in Mr. Wyand's point that if the claimant had had any intention to object to the admissibility of the “more responses” class of evidence, that was the time to have made the objection, but it was not made. Accordingly the defendants collected yet more of the evidence and quite a number of assistant solicitors were sent to Primark Stores in Hammersmith, I think it was, and Manchester and approached actual purchasers of Primark goods bearing the disputed mark and asked them a number of questions which were in common form, and I apprehend were the same questions answers to which had been put before Mr. Justice Blackburne in the examples which had been put in front of him on the earlier occasion.
Ms. Heal relies on O2 Holdings Limited v Hutchinson [2006] RPC 30, a decision of Mr. Justice Lewison, as illustrative of the court's distaste for this kind of evidence. But there are significant differences between the O2 case and the case before me. The O2 case was a trial and it does not necessarily follow that that which is declined at trial, where there has been opportunity to produce evidence in its best form, is necessarily applicable to the hurly-burly approach of the applications court. Moreover, in O2 there had been an order of the court which Mr. Justice Lewison indicated had not been abided by the claimants, who had sought to put in evidence of the kind, or possibly not quite of the kind, with which I am concerned. At para.15 of Mr. Justice Lewison's judgment he said:
“In my judgment, the claimants have not abided by the spirit of that order and, indeed, I do not think that, properly construed, they have abided by the letter of it either. I do not therefore [and I would underline the word 'therefore'] propose to allow Mr. Mumford to be called”.
That would seem to suggest that at least the principal ground for not allowing the evidence in that case was that it had been adduced in a way that had not abided with either the spirit or the letter of an earlier order. Of course there is no such feature before me. On the contrary, the earlier conduct of the case rather suggests that, time having been afforded for the collection of the evidence, it was evidence of a character that could be expected to be admitted at a later hearing.
There were other features in O2 and certainly the learned judge commented on the fact that what was there being sought to be introduced purported to be expert evidence, but was being produced in a way that had not complied with the provisions of Part 35. I would be surprised if Mr. Justice Lewison thought that he was laying down, or was purporting to lay down, a rule of universal applicability when he simply refused the evidence of Mr. Mumford in that case. I do not regard O2 as barring the admissibility of the evidence with which I am concerned.
Ms. Heal also relies on the PepsiCo. case [2006] ETM R 63, where the court was faced with very different responses, as it seemed, to serve a type of evidence, but there, as Mr. Wyand points out, one could more accurately describe what was being carried on as an experiment and, moreover, an experiment in which very different stimuli were put in front of the persons who, on the face of things, had answered in so very different ways. I do not find PepsiCo. as indicative of an absolute bar to the evidence with which I am concerned.
However, a point that does concern me is that Mr. Wyand accepts that it is not part of his case that the claimants have no arguable case. He says that the evidence which he proposes to rely upon merely fleshes out, so to speak, what he would hope to be the judge's natural reaction on seeing the material which is claimed to be the cause of the confusion. He accepts that the questions put (although I have not explained them but they are in common form) could perhaps have been criticised; they almost always can. He accepts that the survey is not full in number and perhaps not the best that could possibly be devised. But nonetheless, he says, it goes a little way, leaving the weight entirely to the judge, to reinforce and bolster what he says should be the judge's natural reaction, namely that there is no real confusion likely on the facts of this case.
I see a lot of force in Mr. Wyand's argument but I am encountering difficulty with Ms. Heal's very powerful point, as it seems to me, that if Mr. Wyand does accept that he is not putting the argument that the claimant has no arguable case, what is relevant today is the wide spectrum described as the balance of convenience, and how, asks Ms. Heal, can this evidence speak to that? I think she is right. Once it is accepted that no case is made that there is no arguable case, it seems to me right to exclude this additional class of evidence because it, as it seems to me, has no weight at all on the balance of convenience, which is what is in front of me. Ms. Heal says that it is incapable of being tested. That, of course, is quite often the case at interlocutory stages, but it is material that what is sought to be put in does not go to the balance of convenience, cannot be tested and would be expensive to respond to; for those reasons, notwithstanding that until it was accepted that Mr. Wyand was not putting that there was no arguable case against him I would have been in his favour, once he accepts that, it seems to me I ought to reject it, and so I do.
LATER:
I have before me an application notice of 30 th April of this year in the action Lyle & Scott Limited against Primark Stores Limited. Ms. Heal appears for the applicant, Lyle & Scott Limited, and Mr. Wyand QC leading Mr. Malynicz appears for the defendant, Primark Stores Limited.
The relief is sought because it is said that, unless immediately restrained, the respondent's activities will cause serious and irreparable harm to the applicant. The applicant, Lyle & Scott, is a well known manufacturer of high quality wear, mainly for men but not, I think, exclusively for men by any means. It once had a reputation chiefly for producing quality knitwear for golfers but more recently has expanded its range to seek to attract a wider and perhaps younger market, but still is dedicated to quality. Primark Stores Limited is a more youthful company. It seeks to excite great numbers of sales at low profit margins and at a different end, I think it would be fair to say, of the clothing market. It certainly does not attempt to reach only golfers or even chiefly golfers, but sells very many goods at cheap prices.
The relief that is asked for by Lyle & Scott is this, that until the trial of the action the defendant must not sell or cause to be sold any clothing, footwear or headgear bearing the eagle device, and it then sets out four separate trademark numbers all of which concern the use of an eagle of one kind or another. Secondly, the defendant must not produce or cause to be produced any clothing, footwear or headgear bearing the eagle design, and again four numbers are set out, and, of course, they ask for costs. The application notice sets out four...
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