L'Oreal SA & Ors v Bellure NV & Ors

This is my ruling on the first, fourth and seventh defendants' application under heading B of para.1 of Mr. Moody-Stuart's skeleton. They seek the skeleton arguments, statements of case, witness statements and expert reports deployed by the claimants in their Defence in the earlier proceedings. There is a closely related subject matter to that of the present action, the claimants apparently adduced evidence and ran arguments inconsistent with the position they have adopted in the present claim.

The basis for the application is set out in Part C of their application. It is clear that the grounds for the application, in my view, is that they want to obtain this evidence because, as they say in Item 3:

There are a number of matters which they seek under this head. I do not see that the skeleton arguments in the previous case can have any relevance to this action. The action is for infringement of trademarks and passing off and the application relates to an apparent stance that L'Oreal took when they were sued in the Debonair proceedings that evidence showed that their products were of superior quality and that there would be no prospect of confusion with the claimants' products in that action because they were of an inferior quality. That is a stance which they do not appear to take in the present action. Indeed, their case is on the basis that there is likely to be confusion despite the defendants' contention that their products are sold in a market of different quality. There is, in my view, as I say, no evidential weight or relevance that can be attached to the skeleton arguments in the previous action. None of it was deployed, and, as will be seen in a further ruling that I make, there was a settlement of that action.

The witness statements are covered by CPR 32.12, which provide that:

It seems to me that in relation to large parts of the defendants' application they give the game away in their application notice. In reality they are really seeking the material primarily in an attempt to discredit the witnesses that L'Oreal deploy in this action. I do not accept that that is a proper basis for seeking disclosure, and in that context I rely upon the judgment of the Court of Appeal in Thorpe v Chief Constable of Greater Manchester Police[1989] 1 WLR 665. That decision was referred to in the House of Lords in O'Brien v Chief Constable of South Wales Police [2005] 2 WLR, at para.49. What is interesting is para.53 of that report, where their Lordships reject the similar fact principle as to be found as to admissibility in criminal cases, but simply apply the test of relevance and the test of admissibility of similar fact evidence in a suit, and such evidence is admissible if it is potentially probative of an issue in the action. I do not see that the witness statements are relevant beyond an attempt to discredit L'Oreal's witnesses in this case, and I would refuse that application in that respect also.

Equally, there is an expert report that was deployed by L'Oreal in that action of a Mrs. Johnson. She is not a witness in the present case and that too, in my view, is sought simply in the hope that they would be able to obtain material for the purpose of discrediting L'Oreal's case.

There is a further witness, however, and that is the survey witness, a Mr. Barter. He is giving evidence in this case and his evidence, as I understand it, will rely upon surveys that he has obtained. We have a glimmer in paras.64 and 65 of L'Oreal's skeleton argument, which has been adduced, in the other proceedings which suggests that he prepared a report there which was critical, on its face, of the use of survey material in that action. This, in my view, is different. It seems to me that given that indication in the skeleton argument, this is going to be gone into at trial. The defendants, in my view, whatever I might rule, will not take this point lying down. They do not at present intend to call their own expert in this area but that does not prevent them from obtaining material, not merely to affect the credibility of Mr. Barter but whether or not his opinion should be accepted on the evidence which he adduces at this trial. It is inevitable that if I refuse the application they will nevertheless put to him the skeleton argument. That also, I have no doubt, will be prefaced by questions put to him under CPR 35 designed to force him to consider his earlier report. He will not, of course, be capable of being deflected from that by the claimants because, as an expert, he owes a duty to the court to consider these matters and merely because that is inconvenient to the claimant would not be a reason for him departing from his duty fully to consider everything when he delivers his report. That is likely to lead at some stage the judge to enquire about these reports and, if the judge is told that I have refused production of those reports, the judge might sigh and say, "That is the end of it". He might entertain an application for the production of their reports. The third possibility is that the case proceeds in an unsatisfactory way with the reports tantalisingly kept out of view, and everybody being left, apart of course from the claimants, not knowing what those reports said. It is possible that a robust judge might follow the cases, such as Lennox Lewis v Eliades, and conclude that the claimant has something to hide, but I really wonder whether, under the CPR and in the object of ensuring that everybody at least has a fair, equal trial as far as is possible, one should force a judge of the trial into this situation and force an expert into this situation and leave it all to be left by inference if it can be avoided.

It seems to me that in relation to Mr. Barter's report the defendants' application goes beyond mere credit. It goes to his opinion on an important aspect of the case. As such, in my view, that report is therefore disclosable.

Mr. Moody-Stuart suggests that under CPR 35 the regime that applies to witnesses, under CPR 32, and, in particular, the restriction of 32.12, does not apply. That is a difficult question to answer. It seems to me that the position before CPR was summarised in the case of Bourns Inc v Raychem (No.2)[1999] FSR 641 at p.676, where the service of report waived the privilege. I see nothing in the CPR that takes that away. In the case of witness statements it is taken away by virtue of the provisions of CPR 32.12. I am not persuaded by Miss Reid's submissions that the experts' reports under CPR 35 are governed by the regime under CPR 32. In my view, they are different regimes with similarities but significant differences. First of all, the purpose of the evidence under the two regimes is entirely different. The witness statement regime is designed to allow a party to adduce their evidence in a particular way with a statement of truth attached to them. An expert report, whilst it is tendered on behalf of a party, is nevertheless tendered to the court to assist the court. The expert in his report gives a declaration which is far removed from the mere statement of truth that the witness gives. Further, his evidence is not called a witness statement. It is called a report. I do not believe that the regimes are merged together under CPR 32. They are separate. Therefore, in my view, Mr. Moody-Stuart is quite right that there is no rule or privilege which the claimant can claim in respect of a report once it has been disclosed in an action. Of course that does not make it disclosable in this action because for it to be disclosable in this action it must nevertheless be relevant to this action.

I have concluded that Mr. Barter's report is relevant to this action for the reason that I have said. I do not conclude that any of the other material is relevant. Furthermore, one of the main objects of the Civil Procedure Rules was to limit disclosure so as to ensure that parties were not required to go beyond what is reasonable. It seems to me that disclosure should be limited to his report. The production of that should not be a difficult exercise for the claimants because they have produced that report for the purposes of the previous litigation. It seems to me that that is more than enough for the defendants to be able to satisfy themselves that they have material to put to him in this case to test his opinion in this case. That is how I will limit that order, to the report itself. I make it clear, for the avoidance of doubt, that does not, for example, extend to the large number of surveys he considered as regards the other side's evidence in the case. I limit it solely to his report prepared for L'Oreal for the purposes of that action. That is my ruling on B.

This is an application for production of the video tapes and interviews conducted on behalf of the claimants, referred to in the witness statement of Tony Quinn. He was employed by the claimants solicitors to interview members of the public. He has produced a witness statement. It is not said by the claimants that he is an expert but his evidence is going to be used by the claimants to suggest that the result of his interviews shows, on a qualitative basis, the public perception of the defendants' products, as I understand it. He interviewed over two stages and he interviewed a total of 25 people. Of those 25 2 are being tendered as live witnesses and a further 6 have been tendered in respect of the transcripts of the evidence that they have given. Mr. Quinn, in his witness statement, para.4, says he was contacted by Baker & McKenzie to conduct interviews with fine fragrance consumers regarding the relationship consumers have with fragrance brands and if, and how, the emergence of a smell-alike affects this relationship. Mr. Quinn is a strategic planning director of the Brand and Communications Consultancy Legas Delaney.

The claimants are very careful not to put him forward as an expert. That would be challenged by the defendants are trial. The question is whether or not the other items of interviews are disclosable to the defendants. Their starting point is CPR 31.14, which states that a party may inspect a document mentioned in (amongst other things) a witness statement. That has been the subject matter of some authority and, in the light of that authority, culminating in the decision in Lucas, it seems to me that I should accept Miss Reid's submission that 31.10 is not absolute. I myself would have decided it differently, as I have on previous cases, but it seems to me that the observations of the Court of Appeal in Lucas bind me at this level of authority. I am by no means convinced, however, as to the observations in the Lucas case but, as I say, that is not for me.

There therefore must be more than a mere mention for the waiver. There must be, in effect, a deployment for the purposes of the claimants' case. I do not see that Mr. Quinn can be said in his witness statement to be deploying the documents that he says he is not using, because he only refers to a number and those have been disclosed. I therefore accept that there is no implied waiver of privilege merely because they have been referred to by Mr. Quinn in his statement.

However, it does seem to me that I should consider why the claimants wish to use them. In that context I note the observations of Mr. Justice Kitchin as to the desirability of having the results of these exercises as fully before the courts as possible, in the decision of Samaan v Tetrosyl. Desirability, however, of itself is not a justification nor a basis for ordering disclosure of materials which otherwise would be privileged, but it does seem to me that I am entitled to look at how the evidence is going to be deployed. The claimants will put forward the results of Mr. Quinn's exercise as a platform for suggesting that that result shows the public perception on a qualitative basis of the defendants' products. That is what Miss Reid frankly accepted that they were going to do. I invited her to say that they were not going to do that when the objections to the evidence in the form it was would then evaporate, but she declined to give such an assurance. It seems to me that once that stance is taken it becomes a different position altogether.

If Mr. Quinn's evidence is going to be deployed in that way, and of course it is the choice of the claimants as to how they choose to deploy their evidence, it seems to me quite clear that the evidence should be disclosed in a full way so as to ensure that what the claimants say is the result of the interviews conducted by Mr. Quinn is actually correct. Not only, of course, is it important for the defendants to know that, it is important for the court to know that and that, in my view, comes within the observations in Nea Karteria, referred to by Mr. Moody-Stuart, [1981] Commercial Law Reports 138, and the references to the earlier decisions in that case. It can only be properly used as a platform for such a submission when all the evidence is put forward and examined to ensure that the material thus put forward is truly representative as contended. If I take an example, let us suppose that Mr. Quinn, who is put up as the witness who has conducted the interviews, actually interviewed 10,000 people and only 2 of those people provided the representative view which the claimant sought. I do not see how it can properly be put forward in that way, that is to say by deploying Mr. Quinn as a person retained to conduct interviews for this purpose, which is what he said he was retained to do, if what is selected out are those parts which suit the claimant and those which disadvantage the claimants are not included. That is precisely the vice intended to be avoided. Once the claimants choose to retain Mr. Quinn to perform this exercise, if they are going to produce the results of his exercise, just disguising them as witnesses is not sufficient. It is still being used for the purposes of deployment to say, "The result of all of these interviews is representative". If they are going to make that submission the evidence must be produced in its entirety to show that the submission is truly reflected by the evidence gathered by him as a whole. Therefore, in my view, if they wish to deploy Mr. Quinn's evidence in this way they must deploy the entirety of the results of his information gathering exercise, and, therefore, I will order production of the items sought under Category A set out in para.1 of Mr. Moody-Stuart's skeleton argument.

This is the third point. This is the application for disclosure of the terms of settlement as between the claimant and D2, 3 and 6. It seems to me that the application is premature. There may be arguments as to their relevance if liability is established. It may well be that at that stage, in the line of the observations of the Court of Appeal in the Nitro case, that the terms are disclosable. There might be a dispute as to what the terms are and that would ordinarily be resolved by, I suspect, the court seeing the terms of the consent order de bene esse and determining whether or not they are disclosable. For the moment, as the only issue going forward is one of liability only, I see no reason why I should make a decision at this stage and, at 5 past 5, I decline to do so. I am going to dismiss that application on the grounds that it is not necessary at this stage of the proceedings.

I am being asked to resolve a question of costs on an application on which I have not heard submissions and in respect of which I have had a very limited view of the papers. The claimants issued an application for disclosure and on 18th May, after the application was made, the defendants proposed a consent order which submits to a significant amount of disclosure and, in particular, a search, albeit of a more limited extent than that sought by the claimants, of a computer which the defendants had failed to disclose. I do not understand it to be said that there is no relevant material on that computer. The challenge was as to the breadth of the computer search sought by the claimants. The defendants' disclosure statement said they did no electronic search because they had no computer, which is, to adopt the phrase of Lord Armstrong, "economical with the actuality", because they did not have a computer but an associated company of theirs did, and that computer was used and, I apprehend from Miss Reid's submissions, that this was discovered by the claimants as a result of their investigations and not by any voluntary revelation on the part of the defendants.

Be that as it may, the application, in my view, was properly brought and the capitulation after the event does not assist the defendants. It seems to me that as they have consented to substantially the whole of the relief sought in the light of a clearly inadequate initial disclosure, the costs of the application should be the claimants in any event.