This case concerns taxis – the black cab sort that is synonymous with London taxi travel (so alleged LTC). LTC is a UK manufacturer of such taxis. By a series of agreements made in 2013, LTC 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.

The First Defendant (Frazer Nash Research Ltd) carries on the business of researching and testing new solutions for transportation. The Second Defendant (Ecotive Ltd) manufactures and sells motor vehicles.

In these proceedings, LTC alleged 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). LTC also alleged 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 LTC’s black cabs, which are said to be common to all such cabs.

The trade mark registrations look like this:

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).

All of this is very interesting, but we are not yet at the point where the trial judge has to decide either way. This was an application by LTC 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 participants of both surveys by adducing their signed completed questionnaires.

Adducing survey evidence has become trickier and trickier in recent years since the several Interflora cases and Zee Entertainment Enterprises Ltd v Zeebox Ltd [2014] and extreme care must be taken with regard to the type of questions comprising the questionnaire and photographic evidence used in order to ascertain differences/similarities (depending on which side of the Claim Form you are standing).

Various tests have been laid down in this case law – namely the ‘real value’ test, the cost-benefit test and the Whitford Guidelines so that any survey evidence which is subsequently adduced in evidence, has real and tangible value.

If you wish to rely on survey evidence or evidence from respondents identified from a survey, permission should be sought at the Case Management Conference. The current standard form order should be amended to make it clear that:

• a party may conduct a true pilot survey without permission, but at his own risk as to costs;
• no further survey may be conducted or adduced in evidence without the court’s permission;
• no party may adduce evidence from respondents to any survey without the court’s permission.

The court will only give permission if it is satisfied that the evidence is likely to be of real value, that the survey is statistically reliable, and that the cost is justified.

If you want the court’s permission to carry out a survey, you will need to provide the court with:

• the results of any pilot survey;
• evidence that the further survey will comply with the Whitford guidelines;
• the cost of carrying out the pilot survey and the further survey.

It is clear that LTC attempted to comply with these requirements. Unfortunately in this case, the deputy Judge hearing the application decided that LTC’s question “Do you think there is a connection between the company that makes this vehicle [photo a] and the company that makes this vehicle [photo z]?” breached all the guidelines. The fact that photo a and photo z both appeared to be taken at twilight, when distinguishing features of the two vehicles could not be adequately determined, was also a bit of a hindrance to the success of the application.

We shall wait to see what happens in November when LTC argue the case without survey evidence, or whether in the meantime, a further survey is undertaken with different questions and photographs.