Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop)

In trade mark and passing off proceedings, evidence from a person working in the trade is not automatically expert evidence under the Civil Procedure Rules 1998 Part 35. The court must examine the nature of the proceedings and the role of the evidence. Factual evidence about the trade, including informed opinions about customer behaviour, may remain ordinary trade evidence. The label attached to a statement is not decisive. However, a witness who gives an expert opinion on the ultimate question for the court, such as whether consumers would infer authorisation, is giving expert evidence and requires permission. Evidence may also be controlled under Rule 32.2 regardless of its classification. On the statements reviewed, only one witness’s evidence required permission under Part 35.

The claimants brought a passing off claim after a Topshop T-shirt used a recognisable image of Rihanna without permission from her or companies deriving rights from her. A trade mark infringement claim had settled, and the passing off trial was imminent. Before trial, the defendants objected to five claimant witness statements, parts of another claimant statement, and evidence from their own witnesses. They argued that the material was expert evidence requiring permission under the Civil Procedure Rules 1998 Part 35. The immediate issue was whether trade evidence in trade mark and passing off cases fell within that regime. Other case-management and utility objections were reserved for a later hearing.

Disposition. The application succeeded in part. Mr Robinson’s evidence was expert evidence requiring permission under Part 35. The remaining challenged evidence was not formally inadmissible under that regime.

1. Characterisation of evidence. Rule 35.4(1) prevents a party from calling an expert or putting an expert report in evidence without permission. No comprehensive definition of expert evidence can be formulated. The court must consider the nature of the proceedings and the role which the evidence is intended to play. Independence is not decisive, and the label attached to evidence does not determine its true character. The judgment adopted the contextual approach in O2 v. Hutchison [2006] EWHC 601 (Ch).
2. Trade evidence. In trade mark and passing off cases, a person working in the trade may give factual evidence about the circumstances of the trade, customers and trading practices. Reliance on experience, and opinions about how customers behave within the witness’s sphere of work, does not necessarily make the evidence expert evidence within Part 35. The reasoning in Sodastream v Thorn Cascade [1982] RPC 459, Guccio Gucci v Paolo Gucci [1991] FSR 89, The European v. The Economist [1998] FSR 283 and Hasbro v 123 Nahrmittel [2011] EWHC 199(Ch) was consistent with that distinction.
3. Ultimate issue. A witness who expresses an expert opinion on the ultimate question for the court, including whether consumers would think that a T-shirt was licensed or authorised by Rihanna, is giving expert evidence. Such evidence must comply with Part 35, whether or not it is labelled an expert report. The former restriction on expert evidence addressing the ultimate question was no longer law. The approach in esure Insurance v. Direct Line Insurance [2008] EWCA (Civ) 842 and Samuel Smith v. Lee [2011] EWHC 1879 (Ch) was applied.
4. Case management. Rule 32.2 permits the court to control evidence irrespective of whether it is characterised as expert evidence. At the case management conference, parties should identify the categories of evidence they intend to call, so that limits on its number or type can be considered.
5. Application. The evidence of Messrs Coyle, Daffner, Dapron and Joseph, Ms Perez, Ms Sauvaire and Mr Chatalos was factual or natural trade evidence and did not require Part 35 permission. Mr Robinson’s reliance on research and his role as a researcher made his evidence expert evidence. The court also questioned the value of unidentified research, duplication and commentary on documents, but left those case-management issues for a further hearing.