Sazerac Brands, LLC & Ors v Liverpool Gin Distillery Ltd & Ors

Permission to amend shortly before trial should be granted only where the amendment can be accommodated without serious complication or significant encumbrance of the existing trial. Similar fact evidence may in principle have probative value in a trade mark infringement and passing off claim involving intentional or reckless unfair advantage. The court must balance that potential value against the lateness of the application, the work required to answer it, the complexity of the new issues, prejudice to the opposing party and prejudice caused by refusal. An amendment may therefore be allowed in relation to a straightforward allegation while refused in relation to materially more complex allegations.

The claimants brought proceedings for trade mark infringement and passing off. They applied 11 days before trial for permission to re-re-amend their particulars of claim to rely on alleged previous conduct by the defendants as similar fact evidence supporting allegations of intentional or reckless taking of unfair advantage.

The proposed evidence concerned an application to register VERA LYNN, which had been refused by the UK Intellectual Property Office partly on bad-faith grounds, and more complex matters concerning PEAKY BLINDERS, corporate control and alleged exploitation of the reputation of a television series. The issue was whether either allegation could fairly be introduced at that late stage of a shorter trial scheme case.

1. Application partly allowed. Permission was granted to amend the pleading to include the VERA LYNN allegation, including in relation to both intentional exploitation and recklessness. Permission was refused in relation to the PEAKY BLINDERS allegation, including any cross-examination on that subject.
2. Similar fact evidence showing previous conduct of the alleged kind could in principle be probative of whether the defendants intentionally took unfair advantage of the claimants’ reputation and goodwill. The fact that the earlier conduct concerned parties who were not competitors did not, of itself, deprive it of probative value.
3. The relevant case-management assessment required consideration of the amount of evidence likely to be disputed, the response reasonably required from the defendants, whether that work could be completed before trial, the lateness of the application, duplication of preparation and costs, prejudice to the defendants, and prejudice to the claimants if permission were refused.
4. The shorter trial scheme created a presumption against changing the nature of the issues after the case management conference, particularly at a late stage. That presumption was not irrebuttable, but a good reason was required for extending the issues and evidence where the change would cause serious complications or significantly encumber the trial.
5. The VERA LYNN matter appeared relatively straightforward and involved little dispute about the primary facts. It could be introduced without extensive preparation. The PEAKY BLINDERS matter involved materially greater factual complexity, including corporate control, ownership, imputation of knowledge and intention, further document searches and potentially additional witness evidence. Its admission would prejudice preparation for a fair trial of the existing issues.
6. The earlier agreement restricting cross-examination concerning recklessness did not prevent permission being granted for the later amendment. It remained a relevant factor in the discretionary assessment.