London Taxi Corporation v Frazer-Nash Research: court blocks survey evidence in black cab design row

What happened

The London Taxi Corporation, maker of the traditional black cab, sued Frazer-Nash Research and its co-defendant for trademark infringement and passing off, claiming a new Metrocab design copied the look of its taxis. Before the main trial, the claimant asked the court for permission to rely on a pilot survey of members of the public, to run a full survey, and to call survey respondents as witnesses. It relied on principles from earlier cases, Interflora and Zeebox, about when survey evidence can be used in trademark and passing off disputes.

What did the court decide in The London Taxi v Frazer-Nash Research?

The judge refused permission. The survey's key question asked whether respondents thought there was a "connection" between the two taxi manufacturers, but the judge found this was leading and invited guesswork rather than testing the real legal issue, which is whether people were deceived into thinking the two businesses were linked. Some respondents who answered "yes" to the connection question gave explanations that didn't actually show deception. The judge also noted this was an ordinary consumer case, where a trial judge wouldn't need survey evidence to assess the point, and that the cost, estimated at around £185,000 to £205,000, together with the likely disruption to the trial timetable from cross-examining survey respondents, outweighed whatever limited value the survey might have had.

What we learned from this

• What I'd take from this is that a survey only helps if its questions go directly to the legal test, in this case deception, not a looser idea like whether people think two companies are connected.
• If you're thinking about commissioning a consumer survey for a trademark or passing off dispute, make sure the questions are designed around the actual legal issue, not a general impression.
• Courts will weigh the cost and time impact of survey evidence against its likely value, so expensive surveys for ordinary consumer products face a harder test.
• Getting early legal advice on how a survey is worded can save a business from spending heavily on evidence a court later refuses to admit.

Things to be aware of

The businesses involved

What happened next

• The wider dispute went to a full trial, where the High Court later held that the London Taxi Company's registered shape trademarks were invalid for lacking distinctive character, clearing the way for the rival Metrocab design.Source: The Guardian, March 2016
• The London Taxi Company's appeal against the invalidity finding was later dismissed by the Court of Appeal.Source: D Young & Co, January 2018

What others said about it

• Mishcon de Reya pointed out that the black cab shape trademarks were found to lack the distinctive character needed to function as trademarks.Source: Mishcon de Reya LLP, January 2018
• Addleshaw Goddard's review of the litigation traced how the shape trademark dispute progressed through to the Court of Appeal.Source: Addleshawgoddard