Fage UK Ltd & Anor v Chobani UK Limited & Anor

On 11^th December 2012, an application was made to me on behalf of the defendants in this matter to proceed to a full survey after they had conducted a pilot survey to establish whether or not the description “Greek yogurt” necessarily connotes or is a necessary indicium of the fact of the product having been made in Greece. On that occasion, for the reasons I sought to set out in my judgment of that date, I permitted the defendants to proceed to a full survey but at their own risk as to costs.

The question which now arises is whether, having conducted that survey, the results of that survey and various pieces of evidence put forward in support of its integrity by way of expert evidence should be adduced in evidence at the trial of this matter, which is now only some three weeks away.

The issue arises because in the decision of the Court of Appeal in Marks & Spencer PLC v Interflora Inc, Lewison LJ, albeit in the context of a trade mark rather than a passing off case, stated in paragraph 149:

“For the future, the standard form of order should be redrafted so as to make it clear that:

i)

A party may conduct a true pilot survey without permission, but at his own risk as to costs;

ii)

No further survey may be conducted or adduced in evidence without the court’s permission; and

iii)

No party may adduce evidence from respondents to any survey without the court’s permission.”

Accordingly, pursuant to that revised form of order, the defendants would not be able to adduce the evidence they have collated at the trial unless permission to that effect is granted.

The test, or two-headed test, really, which is set out in Lewison LJ’s judgment in the Interflora case is this. He states at paragraph 150:

“In deciding whether to give permission, the court must evaluate the results of whatever material is placed before it. Only if the court is satisfied that the evidence is likely to be of real value should permission be given. The reliability of the survey is likely to play an important part in that evaluation. Even then [and I interpolate this as the second stage] the court must be satisfied that the value justifies the cost. As Mr. Hobbs said, this requires the court to conduct a cost/benefit analysis. In a case of trade mark infringement in which the issue is one of deception in relation to the provision of ordinary consumer goods or services, these criteria are likely to be satisfied only in a special or unusual case.”

As I have indicated, this is not a trade mark case, it is a passing off case, so that the preliminary hurdle, if I can put it that way, is for the claimants to establish that Greek yogurt has a distinctive character, one of the indicia which is that it is made in Greece.

The survey evidence which is sought to be adduced goes to that issue. The survey evidence has been the subject, as I have also previously indicated, of expert analysis on the part of the claimants’ through an acknowledged expert in the field, Mr. Malivoire, and on the defendants’ part also by an expert, Mr. Kelly, whose evidence was served last Friday.

Mr. Malivoire has made a number of criticisms both of the way the pilot survey and as to the way it was conducted. Mr. Kelly rejects, subject to one or two exceptions, the criticisms made by Mr. Malivoire, except that he was disposed to accept that the criticisms as to the number of areas in which the question was to be put; further the number of people to be canvassed and the number of areas in which they are to be so has been increased for the purposes of the survey in light of Mr. Malivoire’s criticism.

I find it almost impossible, in fact I would say impossible, at this stage to determine what the value of the survey evidence now put forward is and whether it will have substantial or determinative weight or not. As it seems to me in this case, I should adopt what Mr. Alexander QC, on behalf of the claimants, described accurately as the “cop out solution”.

As it seems to me in the particular circumstances of this passing off case, I should not at this stage rule out the admission or adducing of the evidence which has been collated. It seems to me that the additional costs and time of adducing this evidence are not such as to make it fair or proportionate simply to rule it out at this stage.

I am told that the trial timetable of six days can accommodate this evidence and its testing; and it is also acknowledged on behalf of the claimants that the reasoning behind Interflora, which is saving costs and ensuring that a trial is not overburdened, do not really apply with any great force in the particular circumstances here where the trial is imminent and the additional costs of evidence are relatively low.

I should say that, as I should have perhaps explained earlier, in this case, and possibly unusually, the survey is to be relied on by the defendants, with the advantage of the expert evidence being tested, for what that survey itself discloses. It is more usual for the survey also to be used, and sometimes primarily used, as a means of identifying what witnesses should be selected and evidence tested, but in this case it is not intended to call any of the respondents to the survey evidence. I therefore do not have to deal with that matter.

In short, in the particular circumstances of this case, and the trial being imminent, I give permission for the survey evidence and the consequential expert evidence in its support and in its criticism to go forward and be adduced at trial, leaving it to the trial judge ultimately to determine its relevance and weight.

In that latter context I should make clear that I do so without expressing any view as to its real value and as ever, as in the past, and now, at the defendants’ risk as to costs: meaning, thereby, that if the trial judge were to consider that after all this the evidence has no sufficient or real value, then he/she may well, I leave it to them, make some separate order in respect of the costs of it.