Practice - easyGroup Limited v Easylife Limited
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Chancery Division (Mr Hugh Sims QC) easyGroup Limited v Easylife Limited and another [2021] EWHC 1705 (Ch) (11 June 2021)
This was a pretrial review of a trade mark infringement and passing off action before Mr Hugh Sims QC sitting as a deputy judge of the High Court. The claimant, easyGroup Ltd., holds the trade marks of a number of businesses that are known collectively as the easyGroup. Easylife Limited, the first defendant. operates a mail-order business supplying a range of household, gardening, motoring and other everyday products. I discuss this case because the deputy judge made two interesting decisions.
The Applications
He had to consider two applications:
(1) One by the claimant to exclude some of the defendants' witness statements from the evidence; and
(2) Another by the defendants for permission to amend their defence a few weeks before trial.
In respect of each of those applications, there was a line of authority that might have been expected to incline the court against the decisions that the deputy judge made in this case.
Excluding the Witness Statements
easyGroup Ltd had applied to strike out and exclude 6 of the defendants' witness statements that stated that the witnesses had not been confused by the terms "easyGroup" or "easy group" in contemporaneous communications with or about Easylife Limited even in the context of complaints made by those witnesses to that defendant. easyGroup complained that the evidence had been elicited by asking the witnesses leading questions. The witnesses had been identified in an opinion survey that was alleged not to have been carried out in accordance with principles that Mr Justice Whitford had propounded in Imperial Group plc v Philip Morris Ltd [1984] RPC 293. Lord Justice Lewison had summarized those principles at para [61] of his judgment in Marks and Spencer PLC v Interflora Inc and another [2012] EWCA Civ 1501, [2013] 2 All ER 663, [2013] Bus LR D46, [2013] FSR 21, [2013] ETMR 11:
"Imperial Group plc v Philip Morris Ltd [1984] RPC 293 dealt a body blow to the reception of survey evidence. Whitford J was trenchant in his criticisms of the survey evidence adduced in that case, and laid down guidelines for the conduct of future surveys. These ('the Whitford guidelines') can be summarised as follows:i) if a survey is to have any validity at all, the way in which the interviewees are selected must be established as being done by a method such that a relevant cross-section of the public is interviewed;
ii) any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis;
iii) the party relying on the survey must give the fullest possible disclosure of exactly how many surveys they have carried out, exactly how those surveys were conducted and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents;
iv) the questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
v) exact answers and not some sort of abbreviation or digest of the exact answer must be recorded;
vi) the totality of all answers given to all surveys should be disclosed; and
vii) the instructions given to interviewers must also be disclosed."
After considering Marks and Spencer PLC v Interflora Inc and another, Mr Sims observed at para [13] of his judgment that the issue in that case had not been about whether or not the evidence was admissible but whether it was of any real value to determine the question of confusion for trade mark infringement purposes.
The Court of Appeal excluded evidence that had come to light from an opinion survey for the following reason:
The Court of Appeal excluded evidence that had come to light from an opinion survey for the following reason:
"The witnesses are selected by the person seeking to call them. The selection is never intended to be a representative sample of all interviewees; it is a selection of those witnesses most likely to be most favourable to that party's case. In practice the survey is carried out by the claimant seeking to establish passing off or trade mark infringement. The defendant rarely does this because it is difficult to prove a negative."
The deputy judge noted at [17] that it was the claimant who was seeking to exclude evidence in the case before him.
He referred to para [138] of Lord Justice Lewison's judgment in Marks & Spencer. His lordship said that survey evidence would never be inadmissible as a matter of law. Mr Sims concluded that the admissibility of survey evidence in a particular case would depend on its relevance and the cost of obtaining it. He said at para [26] of his judgment that Lord Justice Lewison's point was "whether the cost justifies the benefit." He added: "if there is no substantial benefit then even if the evidence is admissible it may not justify the disproportionate cost and may be excluded on that ground."
As to the question of relevance Mr Sims also referred to Mr Justice Arnold's judgment in W3 Ltd v EasyGroup Ltd [2018] EWHC 7 (Ch), [2018] FSR 16. The learned judge had said that it was settled that many issues in European trade mark law fell to be assessed from the perspective of the 'average consumer' of the relevant goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect. Mr Sims held that that would sometimes require contemporaneous evidence from such average consumers.
Taking account of all those principles, Mr Sims considered the parties' submissions. The first was that the evidence of the 6 witnesses was either survey evidence and/or a witness gathering exercise, which had been conducted in contravention of the "Whitford guidelines". Mr Sims rejected that submission at [41] for the following reasons:
i) The classic case of survey evidence and/or witness gathering evidence is by a claimant who seeks to adduce consumer evidence, created after the event, in order to support its contention that the average consumer is likely to have been confused. That does not apply here since it is the defendant who is seeking to adduce evidence from witnesses who have been identified by the claimant as having, allegedly or potentially, been confused at the time;
ii) Here the main purpose of adducing evidence from the witnesses in question is in order to try to rebut the inference the claimant seeks to draw from contemporaneous exchanges between the witness and the first defendant or contemporaneous postings on the social media site Trustpilot, which may be said to give rise to an inference that they, as a consumer, were actually confused at the time;
iii) Given that the original contemporaneous exchanges (principally email exchanges) and questions and answers posed to those witnesses after the event (including any questionnaire or "survey" if you like) will be before the court, and are not the subject of this strike out application, the evidence which is to be struck out, the witness statements, cannot be characterised properly as survey evidence;
iv) Nor can those statements be said to be a witness gathering or collection programme, as described in Interflora, but instead, principally, seeking to adduce evidence from the witnesses as to what their state of knowledge and mind was at the time it may be alleged they were confused; and
v) This evidence is not being adduced solely in relation to a trade mark infringement claim, but also in relation to a passing off claim."
As to the question of relevance Mr Sims also referred to Mr Justice Arnold's judgment in W3 Ltd v EasyGroup Ltd [2018] EWHC 7 (Ch), [2018] FSR 16. The learned judge had said that it was settled that many issues in European trade mark law fell to be assessed from the perspective of the 'average consumer' of the relevant goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect. Mr Sims held that that would sometimes require contemporaneous evidence from such average consumers.
Taking account of all those principles, Mr Sims considered the parties' submissions. The first was that the evidence of the 6 witnesses was either survey evidence and/or a witness gathering exercise, which had been conducted in contravention of the "Whitford guidelines". Mr Sims rejected that submission at [41] for the following reasons:
i) The classic case of survey evidence and/or witness gathering evidence is by a claimant who seeks to adduce consumer evidence, created after the event, in order to support its contention that the average consumer is likely to have been confused. That does not apply here since it is the defendant who is seeking to adduce evidence from witnesses who have been identified by the claimant as having, allegedly or potentially, been confused at the time;
ii) Here the main purpose of adducing evidence from the witnesses in question is in order to try to rebut the inference the claimant seeks to draw from contemporaneous exchanges between the witness and the first defendant or contemporaneous postings on the social media site Trustpilot, which may be said to give rise to an inference that they, as a consumer, were actually confused at the time;
iii) Given that the original contemporaneous exchanges (principally email exchanges) and questions and answers posed to those witnesses after the event (including any questionnaire or "survey" if you like) will be before the court, and are not the subject of this strike out application, the evidence which is to be struck out, the witness statements, cannot be characterised properly as survey evidence;
iv) Nor can those statements be said to be a witness gathering or collection programme, as described in Interflora, but instead, principally, seeking to adduce evidence from the witnesses as to what their state of knowledge and mind was at the time it may be alleged they were confused; and
v) This evidence is not being adduced solely in relation to a trade mark infringement claim, but also in relation to a passing off claim."
The second submission was that the evidence had been obtained in such a way that it could be of little value to the court. The claimant complained that it had been adduced by leading questions. The evidence concerned the witnesses' awareness of the easyGroup. Mr Sims held that in the context in which the question on the witnesses' awareness was asked it did not matter how the evidence had been obtained. He decided that he could not exclude such evidence on the ground that it would have no real value.
The third point required Mr Sims to consider the overriding objective and the extent to which the evidence was going to be of any real value and utility. That was essentially a case management question. The evidence had already been obtained. He could see no grounds for excluding it.
Amending the Defence
The defendants sought leave to insert the following additional paragraph into their defence:
The application was resisted on the grounds that it had been made just a few weeks before trial. It would require an amendment to the reply and possibly further disclosure. The claimant argued that there was a heavy burden on a party that seeks to amend at a late stage and that the defendant had failed to discharge it.
Mr Sims referred to para [43] of the judgment of the Chancellor, Sir Geoffrey Vos in Nesbit Law Group LLP v Acasta European Insurance Co Ltd [2018] EWCA Civ 268:
In Quah Su-Ling Mrs Justice Carr had said at para [38] of her judgment:
"a) whether to allow an amendment is a matter for the discretion of the court. In exercising that discretion, the overriding objective is of the greatest importance. Applications always involve the court striking a balance between injustice to the applicant if the amendment is refused, and injustice to the opposing party and other litigants in general, if the amendment is permitted;
b) where a very late application to amend is made the correct approach is not that the amendments ought, in general, to be allowed so that the real dispute between the parties can be adjudicated upon. Rather, a heavy burden lies on a party seeking a very late amendment to show the strength of the new case and why justice to him, his opponent and other court users requires him to be able to pursue it. The risk to a trial date may mean that the lateness of the application to amend will of itself cause the balance to be loaded heavily against the grant of permission;
c) a very late amendment is one made when the trial date has been fixed and where permitting the amendments would cause the trial date to be lost. Parties and the court have a legitimate expectation that trial fixtures will be kept;
d) lateness is not an absolute, but a relative concept. It depends on a review of the nature of the proposed amendment, the quality of the explanation for its timing, and a fair appreciation of the consequences in terms of work wasted and consequential work to be done;
e) gone are the days when it was sufficient for the amending party to argue that no prejudice had been suffered, save as to costs. In the modern era it is more readily recognised that the payment of costs may not be adequate compensation;
f) it is incumbent on a party seeking the indulgence of the court to be allowed to raise a late claim to provide a good explanation for the delay;
g) a much stricter view is taken nowadays of non-compliance with the Civil Procedure Rules and directions of the Court. The achievement of justice means something different now. Parties can no longer expect indulgence if they fail to comply with their procedural obligations because those obligations not only serve the purpose of ensuring that they conduct the litigation proportionately in order to ensure their own costs are kept within proportionate bounds but also the wider public interest of ensuring that other litigants can obtain justice efficiently and proportionately, and that the courts enable them to do so."
The explanation offered by the defendants was that there had been uncertainty as to whether the defence that they sought to raise was available for claims under s.10 (2) of the Trade Marks Act 1994 which had been dispelled by Mr Justice Arnold's decision in W3. They also contended that they had become aware of evidence that had not been available to them before which could only be answered by the proposed amendment.
"a) whether to allow an amendment is a matter for the discretion of the court. In exercising that discretion, the overriding objective is of the greatest importance. Applications always involve the court striking a balance between injustice to the applicant if the amendment is refused, and injustice to the opposing party and other litigants in general, if the amendment is permitted;
b) where a very late application to amend is made the correct approach is not that the amendments ought, in general, to be allowed so that the real dispute between the parties can be adjudicated upon. Rather, a heavy burden lies on a party seeking a very late amendment to show the strength of the new case and why justice to him, his opponent and other court users requires him to be able to pursue it. The risk to a trial date may mean that the lateness of the application to amend will of itself cause the balance to be loaded heavily against the grant of permission;
c) a very late amendment is one made when the trial date has been fixed and where permitting the amendments would cause the trial date to be lost. Parties and the court have a legitimate expectation that trial fixtures will be kept;
d) lateness is not an absolute, but a relative concept. It depends on a review of the nature of the proposed amendment, the quality of the explanation for its timing, and a fair appreciation of the consequences in terms of work wasted and consequential work to be done;
e) gone are the days when it was sufficient for the amending party to argue that no prejudice had been suffered, save as to costs. In the modern era it is more readily recognised that the payment of costs may not be adequate compensation;
f) it is incumbent on a party seeking the indulgence of the court to be allowed to raise a late claim to provide a good explanation for the delay;
g) a much stricter view is taken nowadays of non-compliance with the Civil Procedure Rules and directions of the Court. The achievement of justice means something different now. Parties can no longer expect indulgence if they fail to comply with their procedural obligations because those obligations not only serve the purpose of ensuring that they conduct the litigation proportionately in order to ensure their own costs are kept within proportionate bounds but also the wider public interest of ensuring that other litigants can obtain justice efficiently and proportionately, and that the courts enable them to do so."
The explanation offered by the defendants was that there had been uncertainty as to whether the defence that they sought to raise was available for claims under s.10 (2) of the Trade Marks Act 1994 which had been dispelled by Mr Justice Arnold's decision in W3. They also contended that they had become aware of evidence that had not been available to them before which could only be answered by the proposed amendment.
Even though he did not find the explanation particularly cogent, Mr Sims decided to allow the amendment. It would allow all relevant issues in the case to be placed before the court. It would not be hard for the claimant to reply to it. It was unlikely to require extensive disclosure. The claimant had been aware of the application for some time so it would not be taken by surprise. The heavy burden to which Mrs Justice Carr and the Chancellor had referred in Quah Su-Ling and Nesbit Law Group respectively had been discharged.
Costs
Mr Sims awarded the defendants 25% of their costs. He allowed them 50% of their costs of the application to strike out in any event and the balance to be costs in the case. He discounted his award to reflect the lateness and lack of cogency of the application to amend.
Further Information
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