Passing off: survey evidence

By Audrey Horton


The High Court has refused permission for survey evidence to be adduced to support a claim of passing off.


The Court of Appeal has stated that courts should not allow survey evidence, even if technically admissible, unless satisfied that it will be valuable and that its likely usefulness will justify the costs of the survey (Interflora Inc v Marks & Spencer plc).


L owned a Community trade mark and a trade mark in relation to London black cabs, which depicted different versions of the cab.

F proposed to launch a new “Metrocab” taxi. Although commercial sales had not yet begun, the new taxi had been the subject of trials on the London streets since January 2015.

L sued F for passing off and trade mark infringement. It conducted a pilot survey, which involved interviewing 98 people from London after showing them photographs of one of L’s taxis and one of the new “Metrocab” taxi taken from F’s publicity materials. A key question in the survey was whether, on being shown the photographs, the respondent thought that there was a connection between the company that made Metrocab and the company that made the London black cab, and why the respondent had that view (the key question).

L applied for permission to:

  • Adduce in evidence the results of its pilot survey to establish its passing off claim.
  • Carry out a full survey in the form of the pilot and adduce in evidence the results for the same purposes.
  • Rely on evidence from respondents to both surveys by adducing the signed completed questionnaires as their witness evidence.

The court refused L’s application.

Nothing in the case was likely to be so unfamiliar or not readily understandable to the court at trial to require the admission of L’s survey evidence.

The key question was fatally flawed. By asking about a connection between the companies that made the vehicles depicted in the photographs, the question did not deal with the issue of deception. In addition, the answers to the pilot survey demonstrated that it was a fallacy to suggest that those who believed that there was a connection had been deceived into that belief, and still less deceived because of any similarity in appearance between the vehicles.

It was also a leading question which directed respondents into a field of speculation which they would never have embarked on had the question not been put.

L’s costs budget showed that the cost of conducting the full survey of 1,000 people would be about £100,000, which was roughly 20% of its total litigation budget of £488,000. These costs were significant, particularly as the survey evidence was only relevant to the passing off element of the claim. Another relevant factor was that the trial estimate would need to be increased or a disproportionate part of the time would be spent with regard to witnesses from the surveys.

In addition, L had made the application too late and, if granted, this would have jeopardised the trial date.


The emphasis on cost-benefit analysis, as part of courts' increasing involvement in case and costs management, underlies the current difficulty of admitting survey evidence in relation to trade mark infringement and passing off claims. Where a case concerns both passing off and trade mark infringement but the proposed survey evidence only relates to the passing off element, an important consideration is how much of the parties’ litigation budgets will be spent on the survey and how much of the trial will be spent considering evidence that assists with only one element of the claim.

The court will now determine this dispute without the assistance of survey evidence. As the trial will be heard before the full launch of the new “Metrocab” taxi, it is doubtful that any real instances of confusion will come to L’s attention before the trial.

Case: The London Taxi Corporation Ltd (t/a as The London Taxi Company) v Frazer-Nash Research Ltd [2015] EWHC 1840 (Ch).

First published in the September 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.