Passing Off Claims

In the case of The London Taxi Corporation Ltd (t/a as The London Taxi Company) v Frazer-Nash Research Ltd [2015] EWHC 1840 (Ch), 3 July 2015 the High Court has heard an application as to whether survey gained evidence is able to be used in a trade mark and passing off claim.

The claimant in this matter owns a UK and Community trade mark, in respect of the shape of the London black cab.

The defendant themselves had developed and was proposing to launch a new "Metrocab" taxi. The claimant believed that the defendant’s cab design infringed its intellectual property rights, and instituted proceedings for trade mark infringement and passing off.

In a claim for ‘Passing Off’, one of the elements the claimant has to show is that there has been a representation made by the defendant to the public (whether or not intentional) which leads or is likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant.

Therefore, the claimant  carried out a survey in which 98 members of the public were asked questions after being shown photographs of the competing cabs. One of the questions (Question 5) was: "Do you think there is a connection between the company that makes this vehicle [the Metrocab] and the company that makes this vehicle [the black cab]?", followed by a supplemental question, "Why do you say that?".

The claimant sought permission to adduce the survey evidence in its passing off case in order to establish that the general public would have been led to believe the vehicles were part of the same company. The application was refused for the following reasons:

1. The shape of a taxi was not something that was unfamiliar or incomprehensible to a judge, who should be capable of reaching a decision without the need for survey evidence.
2. Question 5 was flawed. Fundamental to a passing off claim is the need to show a deception. The question was about a connection but had nothing to say about a deception. The connection in the mind of the consumer did not mean there was also a deception.
3. Question 5 was also a leading question. It directed respondents into a field of speculation which they would never have embarked upon had the question not been put. This contravenes previous guidance laid down by the courts when carrying out surveys.
4. The claimant's costs budget showed that the cost of conducting the full survey of 1000 persons would be about £100,000, which was about 20% of its total litigation budget of £488,000. The deputy judge considered that the costs were significant particularly as the survey evidence was only relevant to the passing off element of the claim. Another relevant factor was that the trial estimate would need to be increased or a disproportionate part of the existing five-day fixture would be spent with regard to witnesses from the surveys.