Robyn Rihanna Fenty and Others v Arcadia Group Brands Ltd (t/a Topshop) and Another
| Jurisdiction | England & Wales |
| Judge | The Hon. Mr Justice Birss,Mr Justice Birss,Mr. Justice Birss |
| Judgment Date | 31 July 2013 |
| Neutral Citation | [2013] EWHC 1945 (Ch),[2013] EWHC 2310 (Ch) |
| Docket Number | Case No. HC12C01378,Case No: HC12F01378 |
| Court | Chancery Division |
| Date | 31 July 2013 |
[2013] EWHC 1945 (Ch)
Mr. Justice Birss
Case No. HC12C01378
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Rolls Building
Mr. M. Howe QC and Mr. A. Norris (instructed by Reed Smith) appeared on behalf of the Claimants.
Mr. G. Hobbs QC and Mr. H. Cuddigan (instructed by Mishcon de Reya) appeared on behalf of the Defendants.
At the start of 2011, Topshop sold a T-shirt which carried a picture of the famous pop star Rihanna on it. The image was the subject of a copyright licence from the owner of the copyright in the photograph (not Rihanna), but no permission from Rihanna or from any company deriving rights from her was obtained.
As is common in the music business, Rihanna's trading activities include a substantial merchandising operation selling authorised merchandise, including images of the star herself. Rihanna's full name is Robyn Rihanna Fenty, she is the first claimant. The other claimants are companies through which she carries out her licensing and merchandising business. The defendant runs Topshop.
The claimants sued for passing off and trademark infringement. The trademark claim is settled. The passing off claim is due to come to trial in two weeks' time, floating from 15 th July. The essential question in the claimants' claim in passing off is whether, by virtue of the use of the image on the T-shirt, purchasers will be likely to be deceived into believing that the T-shirt is approved or connected with or authorised by the claimant. I should say that there is no doubt that the image is recognisably Rihanna.
At the case management conference Master Marsh set a timetable for witness statements of witnesses of fact, with statements due in December 2012. The parties were given permission to apply for directions about expert evidence. No directions were applied for, so neither party has permission to rely on expert evidence. Witness statements were exchanged on 13 th June 2013; the shift from December arose as a result of general delays arising from disclosure and two requests for extensions of time from the defendants.
On 26 th June the defendant's solicitors objected to a large part of the claimants' evidence: five witness statements in their entirety and parts of the statement of the claimants' main witness, Ms. Perez. The five witness statements are Mr. Coyle, Mr. Daffner, Mr. Dapron, Mr. Joseph and Mr. Robinson. The evidence objected to is what is often called trade evidence. The five witnesses all describe their experience in their particular businesses, and then describe that field and make various statements which I will come back to. All five witnesses have experience in licensing and merchandising. The focus of Mr. Coyle and Mr. Daffner is in the clothing and fashion sphere, while the focus of Messrs. Dapron, Joseph and Robinson is in the music business. Ms. Perez is the main witness for the claimants, as I have said. In effect she acts as a mouthpiece for Ms. Fenty. She also explains her experience in the merchandising side of the music business and makes statements about that trade.
The main objection is that the evidence is expert evidence which is inadmissible without permission and no permission has been sought. The defendant also contends that the evidence is objectionable because it is expressing an opinion about what consumers would think, is repetitive, and, even if it is admissible, is of negligible value. There are some further points specifically in relation to Ms. Perez in that some of her evidence consists simply of commenting on documents.
The matter came before me on 3 rd July. Mr. Geoffrey Hobbs QC and Mr. Hugo Cuddigan, instructed by Mishcon de Reya, appear for the defendants. Mr. Martin Howe QC and Mr. Andrew Norris, instructed by Reed Smith, appear for the claimants.
Mr. Hobbs' submissions essentially are these. First, he says this is the correct time to take this objection, i.e. in advance of trial. He refers to the Chancery Guide of January 2013, para.4. I will say now that I accept that submission. The clear purpose of the Guide and the paragraph I have referred to is to aim to have disputes like this resolved in advance of trial so that whatever needs to be done about it before trial can be done.
Second, Mr. Hobbs submits the evidence is expert evidence. This involves looking into the cases on the issue, which I will return to, and looking at the statements themselves. Third, submits Mr. Hobbs, if it is expert evidence, then it is inadmissible without permission. That is CPR Rule 35.4(1). Moreover, if it is expert evidence, then, even if it is permitted, the regime in Part 35 applies with various consequences relating to the duties of the witness and the protocol on instructions. Mr. Hobbs also refers to the recent decision of the Court of Appeal in the Force India case. That concerned a different kind of evidence from the evidence before me, but the point was made clearly there, particularly in the judgment of Stanley Burnton LJ, of the dangers of circumventing the requirements of CPR Part 35, albeit, as I say, in different circumstances. Fourth, Mr. Hobbs submits that this evidence should be excluded on case management grounds on any view. There are various problems: it is repetitive, much of it is based in the USA and of no real value. He points to the recent guidance from the Court of Appeal in the Interflora cases about survey evidence in trademark cases. As Mr. Hobbs puts it, the direction of travel and the emphasis is on a consideration of whether evidence to be called in trademark and passing off cases will be of REAL value. He says this evidence is not useful and should be ruled out.
Mr. Howe's submissions essentially are these. First, he says that this evidence is not expert evidence at all, it is trade evidence commonly given in passing off and trademark cases. The issues raised by Mr. Hobbs may go to its weight, but that is best dealt with at trial. Second, the evidence complained of is of the very same character as evidence which the defendants themselves have called. They call trade witnesses who describe the trade and express opinions about views of consumers in this business, and refer to their experience in that trade to bolster the value of their views. Third, submits Mr. Howe, it is not fair to take these case management objections in this way at this stage. In effect, this would be a retrospective case management conference conducted far too late for the parties to do anything about it. Although under the new Rule 32.2 of the CPR that rule will give the court power to restrict evidence generally, that does not apply in this case and it is not fair to impose an equivalent in this way.
Finally I should say that Mr. Hobbs accepted that his client's evidence did contain material which, if his submission was correct, would be expert evidence and only admissible with leave. Mr. Hobbs also submitted that if the evidence was expert evidence, then it is not a matter of discretion, the evidence in inadmissible, without permission, and so the matter needs to be ruled upon.
After I heard the parties, I expressed the following concern. On Mr. Hobbs' case, both sides have submitted inadmissible expert evidence. If that is what has happened, then the consequences need to be applied fairly. Therefore, in order to deal with the issues on this application, I need to rule on that issue first and give the parties time to think about the implications of it for this case. The other case management issues can wait a few days, albeit that the trial is coming up soon. This judgment is my ruling on that question.
Is trade evidence in trademark cases expert evidence within CPR Part 35?
I have not found this an easy question to address and, given the potential ramifications for the conduct of trademark and passing off cases, I will try and address all the material which has been cited to me.
Section 2(3) of the 1972 Civil Evidence Act, provides that rules of court can be made to regulate the admission of expert evidence, but it does not define what expert evidence is. The modern regulation of expert evidence is set out in CPR Part 35.4(1) and (2):
"(1) No party may call an expert or put in evidence an expert's report without the court's permission.
(2) When parties apply for permission they must provide an estimate of the costs of the proposed expert evidence and identify —
(a) the field in which expert evidence is required and the issues which the expert evidence will address; and
(b) where practicable, the name of the proposed expert."
At one stage Mr. Hobbs submitted that this was a novelty in the CPR. That is not right. Previously, Rules of the Supreme Court O. 38, r.35 was to the same effect as CPR 35.4(1), i.e. expert evidence was not allowed to be admitted without leave. That was in force since at least the 1980s. It is true, however, that the regime governing expert evidence today is much more developed now under the CPR than it was before.
In O2 v. Hutchison [2006] EWHC 601 (Ch) Lewison J (as he then was) was asked to consider evidence about a survey by an employee of a market research company, and rule whether it was expert evidence. He said as follows:
"9. 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...
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