Mattel Inc v Woolbro (Distributors) Ltd & Ors

Similar fact evidence in civil proceedings may be admitted where it is logically probative of an issue, provided its admission is not oppressive or unfair and the opposing party has fair notice and a reasonable opportunity to answer it. The court must consider proportionality. Evidence of a defendant’s alleged history of copying may have limited value in proving copying directly, but may be relevant to whether the defendant had prior knowledge of the claimant’s product and therefore an opportunity to copy. A late objection, limited challenge and existing response to the evidence may weigh against exclusion.

Mattel alleged that Simba had infringed community unregistered design right and copyright by copying its “My Scene” doll. Mattel relied on evidence of Simba’s alleged history of copying Mattel products, together with a French Commercial Court judgment concerning similar allegations. Simba objected to the evidence on the grounds that it had limited probative value and that answering it would be oppressive and unfair. The issue was whether the evidence should be excluded at this early stage of the trial.

1. Similar fact evidence. The principle stated in Mood Music Publishing Co. Ltd. v De Wolfe Ltd. [1976] 1 Ch. 119 applied. Similar fact evidence may be admitted in civil proceedings where it is logically relevant and probative, subject to safeguards against oppression and unfairness, and where the opposing party has fair notice and an opportunity to deal with it.
2. Probative value. Evidence that earlier products were similar might have only minor probative value on the direct question of copying. Establishing a history or habit of copying could require detailed investigation of similarity and fashion trends. In an appropriate case, the resulting expense and lack of value could justify exclusion on proportionality grounds.
3. Prior knowledge. The evidence had greater significance on whether Simba knew of Mattel’s product and had an opportunity to copy it. A history of close tracking of Mattel’s products could cast doubt on Simba’s assertion that it was unaware of the “My Scene” doll.
4. Fairness and timing. Exclusion was not justified. Simba had received clear notice three weeks earlier, had already responded with evidence, had not challenged the relevant Mattel witness by cross-examination, and had not denied the copying allegations. Any burden was therefore limited in the circumstances.
5. The evidence was admitted, without that ruling determining its ultimate probative value. The court emphasised that the principal evidence on independent design would be the evidence of the relevant personnel on Simba’s side.

First-instance interlocutory ruling. No prior or subsequent appellate decision is stated in the judgment.