The London Taxi Corporation Ltd (trading as the London Taxi Company) v Frazer-Nash Research Ltd and Another

JurisdictionEngland & Wales
JudgeRichard Spearman
Judgment Date03 July 2015
Neutral Citation[2015] EWHC 1840 (Ch)
Docket NumberClaim No: HC2014-002085
CourtChancery Division
Date03 July 2015

[2015] EWHC 1840 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

Richard Spearman Q.C. (sitting as a Deputy Judge of the Chancery Division)

Claim No: HC2014-002085

Between:
The London Taxi Corporation Limited (trading as the London Taxi Company)
Claimant
and
(1) Frazer-Nash Research Limited
(2) Ecotive Limited
Defendants

Douglas Campbell (instructed by Browne Jacobson LLP) for the Claimant Philip Roberts (instructed by Herbert Smith Freehills LLP) for the Defendants

Hearing date: 15 June 2015

Richard Spearman Q.C.:

Introduction

1

This is an application by the Claimant for permission (a) to adduce in evidence the results of a pilot survey for the purposes of establishing its case on passing off, (b) to carry out a full survey in the form of that pilot survey and to adduce in evidence the results of that full survey for the same purposes, and (c) to rely upon evidence from respondents to both those surveys by adducing as their witness evidence the signed completed questionnaires of such respondents as the Claimant may identify to the Defendants suitably in advance of the trial. It involves applying the principles and guidance concerning the admission of surveys and evidence derived from surveys that are to be found in three relatively recent decisions of the Court of Appeal: Interflora Inc v Marks & Spencer plc [2012] EWCA Civ 1501, [2013] FSR 21 ( "Interflora 1"), Interflora Inc v Marks & Spencer plc (No 2) [2013] EWCA Civ 319, [2013] FSR 26 ( "Interflora 2") and Zee Entertainment Enterprises Ltd v Zeebox Ltd [2014] EWCA Civ 82, [2014] FSR 26 ( "Zeebox").

2

The Claimant was represented by Mr Douglas Campbell and the Defendants by Mr Philip Roberts. I am grateful to both of them for their clear and helpful submissions.

Background and outline of the dispute

3

This case concerns taxis. The Claimant is a UK manufacturer of purpose built taxis. By a series of agreements made in 2013, the Claimant acquired intellectual property rights relating to various models of London black cab from the administrators of Manganese Bronze Holdings plc and its subsidiary LTI Limited, which those companies had been involved in designing, manufacturing and selling since 1972. In that year, Manganese Bronze Holdings plc acquired Carbodies Limited, one of three companies involved in commissioning the FX series of London black cab, a series which dates back to 1947.

4

The First Defendant carries on the business of researching and testing new solutions for transportation. The Second Defendant manufactures and sells motor vehicles.

5

In these proceedings, the Claimant alleges infringement of Community Trade Mark No 951871 (which depicts a version of the London black cab known as the Fairway, which is said to have been introduced in 1989) and UK registered trade mark No 2440659 (which depicts a version of the London black cab known as the TX1, which is said to be have been manufactured and sold between 1997 and 2002, and to have been followed by later versions culminating, from 2007 down to the present day, in the TX4). The Claimant also alleges passing off, relying in that regard on the appearance of the Fairway, the TX1 and the TX4. The claims relate to a number of aspects of the appearance of the Claimant's black cabs, which are said to be common to all such cabs.

6

The trade mark registrations look like this:

CTM No 951871

UK trade mark No 2440659 (series of 6)

7

The Particulars of Claim include allegations that the designs of the vehicles referred to above share "a common design language which is, and which is intended to be, visually apparent to consumers so that the vehicles are instantly recognisable not merely as taxis but as London black cabs in particular" (paragraph 14), that substantial and valuable goodwill subsists in the appearance of "London black cabs" and that members of the public have come to recognise that appearance as "denoting the taxis of a single trade source and none other, which trade source is now in fact the Claimant" (paragraph 18), and that the appearance of the Defendants' new prototype taxi (discussed further below) is shown in photographs annexed at Annex 7 to that pleading (paragraph 22). The particulars given in support of the pleaded case on goodwill include the following:

"The said goodwill extends to both members of the public wishing to purchase taxi services provided by operators of London black cabs, and members of the public wishing to purchase London black cabs.

So far as the former members of the public (ie taxi service consumers) are concerned, it is averred that London black cabs are used to provide taxi services to such members of the public without using any particular marks or signs which are recognised by the public as indicating trade origin. For instance although the letters "LTI" appear on the front grille of the cars manufactured by LTI, and the factory model designation (eg "TX4") often appears on the rear of the vehicle, both marks are small, inconspicuous, and rarely noticed by such members of the public; moreover, even when such marks are noticed by such members of the public they are given little or no significance. Similarly, new vehicles manufactured by the Claimant bear the "London Taxi Company" circular badge on the front grille but again this is rarely noticed and is given little or no significance. Members of the public hailing a taxi will generally look at the appearance of the vehicle, and the only mark or sign which is used by such persons to distinguish the trade origin of the taxi and/or the services provided by such vehicle from those of other traders is the appearance of the London black cab itself.

So far as the latter members of the public (ie taxi purchasers) are concerned, it is averred that purchasers of London black cabs are well aware of the goodwill which subsists in the appearance of London black cabs, and such goodwill forms an important part of their reason to purchase the same as opposed to other vehicles."

8

The Defendants or their predecessors produced various models of Metrocab taxi between 1987 and (according to them) 2006. Some years ago the Defendants began to develop a new model of that vehicle ("the new Metrocab"), which is the subject of the present claims. They have publicised the new Metrocab in various ways, and have shown prototypes of the new Metrocab to potential purchasers. Three or four examples of the new Metrocab have been undergoing trials on the streets of London since about January 2015. However, commercial sales of the new Metrocab have not begun.

9

Accordingly, the present proceedings have been commenced and seem likely to come to trial (in November 2015) before significant numbers of the new Metrocab appear on the road. Any confusion between the Claimant's black cabs and the new Metrocab or deception of the relevant public in that regard which may arise in the normal course of events is therefore unlikely to occur or to come to the Claimant's attention before trial. For this reason, in particular, the Claimant seeks permission to rely on survey evidence.

10

The pilot survey sought, and the proposed full survey would seek, responses from actual or prospective taxi passengers. However, (among many other issues that are raised in their Defence – the validity of the trade marks being but one) the Defendants contend that this is not the relevant public, which is instead limited to purchasers of taxi cabs.

11

Another aspect of the Claimant's pleaded case is that the Defendants' acts were calculated and intended to deceive. In particular, the Claimant contends that the Defendants deliberately adopted an appearance for the new Metrocab which closely resembled the appearance of the Claimant's black cabs in order to benefit from the Claimant's extensive goodwill and reputation in that appearance. Among other things, the Claimant relies on a press release issued in January 2014 in which Sir Charles Masefield, described as the "Metrocab Chairman", is quoted as saying that the new Metrocab is "Instantly recognisable as an iconic London Hackney Cab". Although the existence and contents of the press release are admitted by the Defendants, these allegations (like much of the contents of the Particulars of Claim) are otherwise denied.

12

These are merely examples of a host of issues raised by the parties' pleaded cases. It forms no part of my function on the present application to consider the merits of these rival contentions. I mention them merely to place that application in context, and, in particular, to record that there is a live issue as to whether the survey exercise may be directed at the wrong target, even if the Claimant is able to meet all the Defendants' other criticisms and complaints concerning it. As I indicated during the course of argument, while I do not consider that this could properly be decisive of the outcome of the application, this last consideration is clearly one that does not assist the Claimant.

The law

13

The applicable legal principles were largely not in dispute.

14

The question of whether the defendant is making a representation that is calculated to deceive is ultimately a matter for the trial judge alone. Both sides referred to AW Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273, Lord Parker of Waddington at p286: "… there can be no doubt that in a passing-off action the question whether the matter complained of is calculated to deceive, in other words, whether it amounts to a misrepresentation, is a matter for the Judge, who looking at the documents and evidence before him, comes to his own conclusion, and, to use the words of Lord Macnaghten in ( Payton & Co. Ld v Snelling, Lampard & Co. Ld 17 RPC 635) 'must not surrender his own independent judgment to any witness whatsoever' …"

15

However, it...

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1 books & journal articles
  • The Consumer as the Empirical Measure of Trade Mark Law
    • United Kingdom
    • The Modern Law Review No. 80-1, January 2017
    • 1 January 2017
    ...[2013] EWHC 936 (Ch).38 Interflora Inc vMarks & Spencer Plc [2013] ETMR 35.39 n 23 above.40 [2014] FSR 19 at [81]–[83].41 [2014] FSR 26.42 [2016] FSR 7.43 [2014] FSR 3144 [2013] EWHC 1826 (Ch).45 n 32 above.46 V. Huang, K. Weatheralland E. Webster, ‘The Use of SurveyEvidence in Australian Tr......

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