THE PRACTICE DIRECTION SHOULD NOT BE TAKEN AS A WEAPON IN WHICH TO FILLET TWO OR THREE WORDS FROM A WITNESS STATEMENT: CLAIMANTS FAIL IN THEIR PITCH TO EXCLUDE EVIDENCE

In Lifestyle Equities CV & Anor v Royal County of Berkshire Polo Club Ltd & Ors [2022] EWHC 1244 (Ch) Mr Justice Mellor refused the claimants’ application to exclude or edit the defendants’ witness statements.

“… in my view PD57AC should not be taken as a weapon with which to fillet from a witness statement either two or three words at various points or essentially insignificant failures to comply with PD57AC in a witness statement. Furthermore, in my view, before an application is brought seeking to strike out passages in a witness statement based on PD57AC, careful consideration should be given as to proportionality and whether such an application is really necessary. Indeed, in my view, an application is warranted only where there is a substantial breach of PD57AC (as, for example, in Greencastle). If there really is a substantial breach of PD57AC, it should be readily apparent and capable of being dealt with on the papers. That might provide a mechanism for dealing with objections in an efficient and cost-effective manner.”

FORTHCOMING WEBINAR: “WITNESS STATEMENTS IN THE CLIENT’S OWN WORDS”

I am presenting a webinar on the 25th July 2022 which deals with the requirements that a witness statement be in own words of the witness. That webinar also deals with witness statements when the witness does not have English as their first language. Booking details are available here.

THE CASE

The action concerns the use of signs and words relating to the Royal County of Berkshire Polo Club.   The defendants required “trade evidence” to establish part of their case in relation to usage of the words. The defendants provided witness statements relating to trade evidence. The claimants applied to strike out part of these statements as being in breach of PC57AC.

THE JUDGMENT ON THIS ISSUE

The judge refused the claimants’ application.   Trade evidence was necessary and admissible.  The statements did breach the rules in various minor respects, however this did not warrant striking any part of the statements out.

1. 1. Mr Amoore is the General Manager of RCBPC and has been since 2006. He has been at RCBPC since it was it was established, initially as Polo Manager. In his role as General Manager, he is responsible (inter alia) for managing the Club’s merchandising activities. He says this includes liaising with RCBPC’s licensing agents, making decisions on the selection of licensees, negotiating terms and managing the relationships, overseen by the statutory directors of RCBPC.

1. 1. Mr Amoore’s evidence describes the history of the first defendant and his role in it, the history of its use of the marks complained of, both in the UK and overseas, the history of the trade mark disputes between the parties in relevant territories.

1. 1. The structure of his witness statement is explained by him in an introductory paragraph as follows:

‘5 (a) In Section A below, I set out some background information about RCBPC, my role within RCBPC and its merchandising activities overseas including its instruction of licensing agents, formerly the Fourth Defendant and currently a leading brand management agency, CAA-GBG. I also describe RCBPC’s use of its trade marks to date in the UK.

(b) In Section B below, I set out the background of the LE’s dispute with RCBPC both generally and then, in particular, in relation to each of the territories that are the subject of these proceedings together with an explanation of my understanding of the trade mark position with regards RCBPC’s trade marks in each of those territories.

(c) In Section C below, I explain in detail how I have managed the overseas merchandising activity of RCBPC and how and when I report to the directors of RCBPC on those issues in response to LE’s allegations of joint liability of the First to Third Defendants set out at paragraphs 42 to 46 of the Amended Particulars of Claim and the First to Third Defendants’ response to those allegations at paragraphs 17 to 20 of the Amended Defence and Counterclaim of the First, Second and Third Defendants.

(d) In Section D below, I confirm that there has never been any intention on the part of RCBPC or its directors to harm LE’s business or brand. This is a normal situation where each party’s brands are, to some degree, in competition with each other – there is not a more sinister intention on the part of RCBPC or its directors, as LE appear to suggest at paragraphs 106 to 110 of the Amended Particulars of Claim under the heading “Conspiracy to Injure by Unlawful Means”, to develop its brand in a way that causes financial loss or damage to LE.

(e) In Section E below, I set out that I have not received any reports of confusion on the part of any consumers, retailers, buyers or licensees between the LE’s brand and RCBPC’s brand, either directly or via its licensing agents. I set out my limited knowledge of the other brands in the markets of the various territories and coexistence agreements that exist between RCBPC and third parties and between LE and third parties.

(f) In Section F below, I make some concluding comments drawing what I consider to be the key points arising from Sections A to E of this witness statement.’

1. 1. Against that background, I have grouped paragraphs objected to by LE along with a summary of the objection.

[6]-[14] & [17] – irrelevant commentary and/or opinion, contrary to PD 3.2 and SBP 3.6(4).

1. 1. It is not necessary to set out all these paragraphs. They all appear in section A as background. In them Mr Amoore first gives a very brief history of the first defendant and then his background and his role in the first defendant since 1985. These paragraphs form part of the material by which he seeks to establish his credentials for being in a position to give relevant trade evidence. Some of it may be of marginal relevance (e.g. his experience in the administration of polo in the UK in [17]), but relevance is for assessment at trial.

1. 1. None of this is irrelevant and the limited opinion evidence is either trade evidence or goes to establishing his ability to give the further trade evidence later in his statement.

[21] – argument, plus a lengthy extract from a document, contrary to SBP3.6(1).

1. 1. In this paragraph, Mr Amoore refers to one of LECV’s allegations of non-use in this action and sets out the key passage from a prior decision at the EUIPO when a previous allegation of non-use made by LECV was rejected. This might be of marginal relevance, but the citation from the decision helpfully identifies the key passage.

[28] – opinion, matters of belief, commentary on other evidence.

1. 1. In [28] Mr Amoore gives his opinion as to the reason for the strength of the RCBPC brand in the Overseas Territories. He refers to the ‘Englishness’ of the RCBPC brand, which he says consumers in Latin American countries love, and says it is something ‘we have worked hard to promote in promotional materials like our Style Charters..’ This is trade evidence. Whether the trial judge accepts it is a different matter.

[39]-[58] – recitation and commentary on a trade mark schedule prepared by the defendant’s trade mark agents.

1. 1. In [39], Mr Amoore explains:

‘In relation to each of the territories that are the subject of these proceedings I set out at paragraphs 40 to 58 below an explanation of the disputes we have encountered with LE including in relation to trade mark registrations which is informed by RCBPC’s trade mark attorney Bailey Walsh. At pages 121 to 135 of Exhibit MA1 is a Trade Mark Schedule prepared by Bailey Walsh and updated on 22 March 2022 which contains details of the trade mark applications since it was first established and their current status in alphabetical order by country. Where there has been an opposition a brief note of the opposition is given. I shall refer to this document herein as “the Trade Mark Schedule”.

1. 1. In an action for trade mark infringement which is limited to the UK, one would normally expect the Court to receive evidence about prior disputes between the parties involving either the same or similar marks. Even if those prior disputes give rise to no estoppel or abuse arguments, one side or the other usually relies on them as indicating something about the likelihood of confusion, the taking of unfair advantage or the cause of detriment or the general behaviour of the other party etc.. For example, in paragraphs 40-43 Mr Amoore relates that the first defendant has, between 1989 and 2016, made some 8 applications to register signs which are now alleged to infringe, despite the fact that none were the subject of opposition from LECV. The relevance of this sort of information can vary very widely, but assessment of relevance is a matter for trial.

1. 1. I entirely accept that, unaided by reference to documentary records provided by the first defendant’s trade mark attorneys, Mr Amoore’s evidence would have been likely to have been something along the lines of: ‘Over the years, we have made a series of applications for registration of trade marks in the UK, and, as far as I can recall, none were opposed by LECV’.

1. 1. However, in my view, the Court is likely to be assisted by the more precise evidence which he can give by reference to the schedule of information prepared by the trade mark attorneys. His evidence indicates that he was involved, at least to some degree, in decisions to apply to register trade marks and when responding to any developments regarding those applications. Any errors in the schedule can be challenged, but the presentation of the information in the schedule is, in my view, an efficient way of conveying information which one party contends is relevant and one which, ultimately, saves costs and court time.

1. 1. Mr Amoore explains the more complicated situation regarding EUTMs in [44]-[47], but he sets out the relevant information (and he could have been the subject of criticism if he had not presented the full picture).

1. 1. In [48]-[58], Mr Amoore sets out the history of applications and any oppositions thereto regarding the Overseas Territories. If the Court receives this type of information regarding the UK, there is perhaps a greater reason to receive it for a foreign territory where the Judge has less or no experience of the market conditions.

1. 1. Overall, I saw no reason to exclude this material or to interfere in the way it is presented.

[59], [60], [73]-[74] – commentary on disclosure documents

[75] -opinion and/or submission.

1. 1. All these paragraphs are in Section C, where Mr Amoore responds to the allegation of joint and several liability against the second and third defendants. In [59]-[60], he sets the context with a summary of the allegations made in [42]-[43] & [45] of the Particulars of Claim. In [61]-[72] (to which no objection is taken), he refers to a number of disclosure documents to explain his role in the licensing activity which is said to give rise to joint and several liability of the second and third defendants. In effect, he is saying he undertook all the substantive activity in the licensing of the first defendant’s marks, with the second and third defendants merely reviewing and approving his activities. [73]-[74] is more of the same, albeit [73] contains a list of 13 emails. Although I have not seen these emails, it is apparent from the witness statement that the purpose of this list is to show the first defendant’s licensing agent, the fourth defendant, reporting directly to him (and presumably not to the second and third defendants).

1. 1. All of this appears to be relevant evidence. Again, assessment of it and its relevance is for trial but I am satisfied none of it should be excluded.

1. 1. [75] contains the conclusion which Mr Amoore seeks to draw from the previous paragraphs in this section. Although some of it is argument or submission, this is a minor infraction. In addition, this paragraph does contain some evidence from him. The weight to be attached to this is a matter for trial.

[76]-[77] – argument and/or opinion

1. 1. These paragraphs are at the start of Section D, which is headed ‘No intention to harm LE’. In [76], Mr Amoore starts by setting the context with a brief reference to the section of the Amended Particulars of Claim titled ‘Conspiracy to Injure by Unlawful Means’ and what he has been told those allegations entail. Then he identifies some of his earlier evidence as relevant to this.

1. 1. In [77] he refers to the disclosure process and confirms there ‘are no documents what were relevant to or discloseable against this issue’. His next sentence is opinion and conclusory. However the final three sentences are evidence. Once again, the weight to be attached to each will be a matter for trial and, no doubt, cross-examination.

[79]-[80], [82], [83, save for the last sentence]-[84] – opinion, matters of belief, commentary on other evidence.

1. 1. These paragraphs are in Mr Amoore’s section E entitled ‘Confusion & co-existence’. The general thrust of this section of his evidence is that there are many polo brands in relevant markets and they co-exist, a point confirmed by his knowledge of various co-existence agreements between Ralph Lauren and three entities, including the first defendant.

Conclusion

1. 1. Having reviewed the various objections in detail in this judgment, I adhere to the view I expressed at the hearing that, whilst there are some minor infractions, it is not reasonably necessary to excise any of the paragraphs or passages to which LECV objected, because very largely they comprise admissible trade evidence.

1. 1. Some of the points taken in Brandsmiths’ letter were trivial. Whilst I accept that certain points were not maintained in the Application Notice and Mr Edenborough QC did not press minor points in oral submissions, in my view PD57AC should not be taken as a weapon with which to fillet from a witness statement either two or three words at various points or essentially insignificant failures to comply with PD57AC in a witness statement. Furthermore, in my view, before an application is brought seeking to strike out passages in a witness statement based on PD57AC, careful consideration should be given as to proportionality and whether such an application is really necessary. Indeed, in my view, an application is warranted only where there is a substantial breach of PD57AC (as, for example, in Greencastle). If there really is a substantial breach of PD57AC, it should be readily apparent and capable of being dealt with on the papers. That might provide a mechanism for dealing with objections in an efficient and cost-effective manner.

1. It is for all these reasons I dismissed LECV’s application with costs. I summarily assessed the Defendants’ costs in the sum of £14,000. LECV’s costs were considerably greater.