You’re cabbing a laugh (Brands & IP Newsnotes - issue 1)

Ecotive proposed to introduce a new version of its ‘Metrocab’ taxi to London’s streets – and, in LTC’s view, pass off that new cab as the ‘standard’ London black cab.

It is both true and trite (or should that be ‘hackneyed’?!) to say that achieving permission to conduct a survey in a trade mark infringement claim is now next to impossible (following the Court of Appeal’s decision in Interflora). However, the consensus has been that it was still possible in passing off claims.

Interflora set out several tests: a “real value” test (ie would the survey provide the court with a perspective it wouldn’t otherwise readily have?) and a “cost-benefit” test (ie would the costs of carrying out and interpreting the results of the survey be worth it?).

Where the wheels came off

When applying these tests, the Court put the brakes on the survey. It was concerned by the photographs of the competing cabs on which the survey would be based. They were not a fair comparison and the goods in issue, London cabs, were neither “specialised” nor “esoteric”. So the Court didn’t need the assistance of the fare paying public. It was also concerned by LTC’s projected cost – more than 20% of its projected total costs to trial.

Surveys are expensive and difficult to do without artificially leading the participants. But they are carried out with ‘real’ consumers, whose vision has not been tainted by years of considering the technicalities of IP disputes and whose eyes do not consider an alleged infringement in the (some might say, equally) artificial surroundings of a court room. This decision offers a further death-knell to rights holders seeking to educate judges about the likely views of consumers, rather than gambling on the trial judge’s view of how consumers think.