Puma Se v Transport for London
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 03 May 2023 |
| Neutral Citation | [2023] EWHC 1236 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2022-000075 |
[2023] EWHC 1236 (IPEC)
HIS HONOUR JUDGE Hacon
Case No: IP-2022-000075
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY AND ENTERPRISE COURT
7 Rolls Buildings
Fetter Lane
London
EC4A 1NL
Mr C Aikens (instructed by Appleyard Lees IP LLP) appeared on behalf of the Claimant
Mr M Twivy (instructed by TfL Legal) appeared on behalf of the Defendant
(As Approved)
JUDGE In the summer of 2022, London hosted the European Women's Football Championship, Euro 2022. The final was held in Wembley Stadium on 31 July 2022 where England beat Germany by two goals to one. A long time after 1966.
The claimant (“Puma”) is the well-known manufacturer of sports clothing. Puma saw Euro 2022 as a good marketing opportunity. Through its marketing agents, Talon Outdoor Limited (“Talon”), in July 2022 Puma entered into an agreement with Global Media Group Services Limited (“Global”). Pursuant to this agreement advertising space in Wembley Park Tube Station was secured on behalf of Puma. Like other tube stations, Wembley Park is under the control of the defendant (“TfL”). The advertising consisted of photographs of several women football players sponsored by Puma who were wearing Puma branded clothing, other Puma branding on the images and the taglines “Faster Football” and “Our Time”. The advertising was put up on 14 July 2022, covering large parts of the station including screens on escalators, posters on platforms, and panels on ticket gates. Puma was not an official sponsor of Euro 2022, so the advertising contained no express reference to the tournament.
Under the agreement, the advertising was due to remain in place until 1 August 2022. However, on 28 July 2022, three days before spectators arrived for the final, the advertising was removed in its entirety on the instructions of TfL. Puma was understandably unhappy about this and now seeks a route to compensation. Puma's difficulty is that it does not know exactly what happened. In particular it feels unable to know which party should be a defendant to any proceedings.
Puma's application today is for Norwich Pharmacal relief, by which, in broad terms, TfL would disclose all documents in its possession containing any complaint or threat of legal action in relation to the advertising or which included any request for removal of the advertising. The draft order prepared on behalf of Puma also requires service of a witness statement from an officer of TfL identifying the source of the documents and how they came to be received by TfL.
Chris Aikens appears for Puma, Max Twivy for TfL.
Although Puma feels unable to say exactly why its advertising was removed, it was given some idea from what Global told Talon. On 26 July 2022 an officer of Global sent an email to Talon which included this:
“As discussed, we have been advertised by TfL that they have received a complaint from UEFA via the FA and, as a result, TfL has instructed Global to remove Puma's campaign from Wembley Park station by close of business on Thursday 28 July. Below are the details of the complaint provided by TfL to Global.
TfL has received a complaint from UEFA via The FA to the effect that the advertising in question amounts to ‘ambush marketing’ and passing off, in that it will lead members of the public wrongly to believe that Puma is an official sponsor of or is otherwise associated with the Women's Euros currently taking place at, amongst other venues, Wembley Stadium.
As you will be aware, TfL's advertising policy does not permit advertisements which do not comply with the law and/or the British Code of Advertising, Sales Promotion and Direct Marketing. TfL is permitted to direct the removal of such advertisements, or indeed any advertisement which TfL reasonably considers to be contrary to its interests.”
On 28 July 2022 Puma's solicitors wrote separately to UEFA and the FA. The first response from UEFA came directly from that organisation in the form of a holding letter. The substantive response came from their English solicitors on 29 July 2022. The letter included this.
“1. UEFA has at no point contacted, or made any threat of any legal or other action against, Transport for London regarding your client's marketing and imagery referred to in your letter (the ‘ Material’). Accordingly, there are no threats for UEFA to withdraw.
2. UEFA has at no point alleged to Transport for London or any third party that the Material constitutes trade mark infringement or passing off. Again, our client has had no contact with Transport for London in relation to this matter.”
The first response from the FA came from their English solicitors, Bird & Bird. The letter included this:
“As the host association, our client was naturally in touch with the GLA and TfL on a regular basis in the lead up to and during the Euros, however, our client has not engaged in any of the conduct alleged in your letter. In particular, your suggestion that our client has made unlawful threats against TfL (and your client's associated claim for conspiracy) is wholly unfounded and there are no threats for our client to withdraw. Your client's suppositions and assertions are misguided and misplaced.
Even if our client were to have raised these issues with TfL, your letter does not establish that your client meets the requirements for the claims of ‘unlawful interference’, ‘inducement to breach contract’, and ‘conspiracy to cause loss by unlawful means’ that your letter asserts.”
Later in the letter, Bird & Bird said this:
“Your letter states “ we understand that the FA has alleged ‘ambush marketing’ (trade mark infringement) and passing off in relation to the continued display of the Material at Wembley Park Station. This is false.”
Puma were not satisfied with what had been said in that letter and on 8 August 2020 Puma's solicitors responded, pressing for details of communications between the FA and TfL. The letter from Puma's solicitors included the following questions:
(1) Did the FA make a request to Transport for London and/or Global requesting removal of the Materials, or procure that another body make such a request on its behalf, and how was such request made?
(2) Did the FA notify Transport for London that the presence of the Materials at Wembley Park Station interfered with the FA's legal rights
(3) Did the FA notify Transport for London that the presence of the Materials at Wembley Park Station interfered with the legal rights of UEFA and/or that such notification was made on behalf of UEFA?
(4) What was the precise nature of the claim to remove the Materials and what was the basis of the legal rights claimed?
(5) Please provide copies of all communications relating to the foregoing.
If no communications listed above were made by the FA to TfL, or on behalf of the FA to TfL please state this clearly in your response.”
On 15 August 2022 the FA's solicitors replied and that letter included this:
“For the sake of confirmation, having now had the opportunity to undertake an initial internal review, our client is not aware of anyone from The FA contacting TfL in respect to this issue.”
Later in their letter, Bird & Bird said:
“Given all of the above, our client has no intention of providing any of the documents requested, nor does your client have any right to them. Just as ‘this is not a matter your client is willing to let lie’, our client is not prepared to allow your client's baseless fishing expedition to continue any longer.”
Bird & Bird's letter began its conclusion in this way:
“It appears that your client's grievance lies in the fact that Global and/or TfL removed your client's promotional material from Wembley Park Station. Your client should therefore resolve this matter with Global/TfL rather than continuing to make allegations against our client.”
Puma interpreted this to be a blank denial by both the FA and UEFA that either had had anything to do with the removal of Puma's advertising despite what Global had told Talon. Puma's position today is that it has reached an impasse which can be broken only by the court requiring TfL to disclose the relevant information.
Before turning to the principles which govern the grant of an Norwich Pharmacal relief, I will deal with a preliminary issue raised on behalf of TfL in its written submissions although not taken up by Mr Twivy in his oral submissions. Puma has brought this application before the court by way of a Part 8 claim, as is usual for Norwich...
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