The Consequential Hearing
There was a further hearing on 1 June 2021 followed by written submissions on 16 and 26 July 2021 In those proceedings Lidl sought indemnity costs while Warren sought no order. Because of unflattering articles about the case that had appeared in the press, Lidl sought a publicity order. Warren asked for permission to appeal. In Philip Warren & Son Ltd v Lidl Great Britain Ltd and others [2021] EWHC 2372 (Ch) which Mr Alexander handed down on 26 Aug 2021, he ordered Warren to pay 90% of Lidl's costs with a summary assessment of £581,785.47. He refused a publicity order and granted permission to appeal on grounds relating to misrepresentation and damage.
- Every passing off case turns on its own facts (para 20-015 of Kerly's Law of Trade Marks and Trade Names 17th ed).
- Goodwill may be more or less attractive at bringing in custom in different geographical regions and for particular sectors of the public. The impact of goodwill depends on a wide range of factors such as the degree of attention customers pay, the circumstances of use of the signs and of the trade in general including any factors tending to promote or counter confusion.
- A 'fairly thin spread of goodwill' outside the claimant's main centre of operations may sometimes suffice for nationwide relief. In Mr Alexander's view, "a claimant must in general show that it has sufficient goodwill which is likely to suffer substantial damage as a result of the defendant's use of the mark in question."
- The alleged misrepresentation must have deceived or be likely to deceive and the claimant must be likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient but it is sufficient that the defendant misrepresents its goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff's business or goodwill will be damaged.
- Any misrepresentation must be more than transitory and must be likely to be operative. It is not sufficient that a purchaser may be misled or caused to wonder whether there is a connection with another trader.
- The question of whether there is a misrepresentation and whether it is likely to be significant quantitatively or qualitatively is one for the court.
- Passing off is a tort involving deceit of a particular kind. A claim must have at its heart a serious allegation that a defendant has been specifically misleading a significant number of members of the trade or public into believing that its goods are connected with the claimant. It is not enough if a defendant's actions cause limited and/or temporary confusion, frustration or annoyance or if a defendant sells products that appear to be more authentic than they are.
"In this case, the key questions can be answered by considering whether, having regard to the goodwill that existed among particular parts of the public, the sale by Lidl of WARREN & SONS branded meats was likely to have involved an operative misrepresentation to a sufficiently substantial part of the relevant public that those goods were connected with PWS such as to cause [Warren's] goodwill in that part of the public material damage. There are several ways of addressing such an issue. Given the way in which the case was argued on both sides, it is convenient to do so by reference to categories of [Warren's] customers to whom potentially operative misrepresentations are said to have been made: (a) wholesale customers (b) retail customers local to and remote from Launceston. This is not to divide [Warren's] goodwill into 'retail' and 'wholesale' or in different parts of the country, which is somewhat artificial, but is a way of analysing the extent to which misrepresentations are likely to have been made on the basis of how and in what way the respective marks are known and encountered."
The deputy judge found that Warren had built up a substantial goodwill in the wholesale trade by 2015. It supplied restaurants and high-end establishments in Southeast England and elsewhere. Mr Alexander considered it highly unlikely that Lidl's sale of Warren & Sons branded meats would give rise to an operative misrepresentation to a significant number of wholesale traders. There was hardly any evidence of confusion and none of damage to the claimant's goodwill.
Lidl conceded that Warren had goodwill as a retailer of high-quality meat in and around Launceston and Mr Alexander assumed that at least some of its customers would also have shopped at Lidl. However, there was very little evidence of operative misrepresentation. Their respective logos were very different They were sold through different sales outlets. There were very few complaints or other communications to suggest that consumers have been misled. Consequently, there was precious little evidence of confusion or damage.
Mr Alexander found that there was likely to be some goodwill among visitors to Cornwall, mail order and website customers and maybe high-end restaurant diners but there was no evidence as to how many of them were Lidl customers. Even those who were Lidl customers were unlikely to perceive a connection with Lidl's goods. If and insofar as any of them did, their misconceptions were quickly corrected by Warren.
The Counterclaim
Lidl contended that if it was passing off its goods as Warren's on the basis of Warren's goodwill in Launceston Lidl had goodwill in the Warren and Son mark in the rest of the country with which Warren was misrepresenting a connection. The deputy judge rejected that contention for several reasons. First, Warren had started trading under its mark first. Secondly, there was no evidence that the public outside Launceston connected Warren's goods with Lidl's mark. Thirdly, there was no likelihood of damage.
The Settlement Offer
At para [138] of the 30 April judgment, Mr Alexander noted that Warren was claiming £38.3 million on an account of profits or £17.7 million on an inquiry as to damages. The learned deputy judge did not have to consider the pecuniary remedies because the action and counterclaim had failed but he indicated that they were unlikely to have been awarded on that scale. At para [20] of the 26 Aug judgment, the deputy judge noted that Lidl had offered to pay damages of £230,000 to Warren and all its costs in October 2020. Warren rejected that offer in the hope of recovering more.
"The Mail" Article
After trial, but before judgment, Warren's managing director and its solicitor assisted a journalist from the Mail on Sunday/Mail Online with an article with the headline “Fake Moos?” A copy of that article appears in the annexe to the 26 Aug judgment. It focused on the case, was given nationwide publicist and was picked up by other papers, including some in Cornwall. The article did not paint a flattering picture of Lidl’s conduct. The company was accused of deliberately taking Warren's brand with a view to using PWS’s good name to sell poorer quality produce. The article resulted in numerous adverse comments including threats never to shop at Lidl again.
Lidl's Claim for Indemnity Costs
Lidl claimed costs on an indemnity basis on the ground that Warren had failed to beat its Part 36 offer. Warren argued that any award to Lidl should be reduced because it had rejected an offer to mediate.
Mr Alexander's starting point was CPR 44.2:
"(2) If the court decides to make an order about costs –
(a) the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but
(b) the court may make a different order.
.................
(4) In deciding what order (if any) to make about costs, the court will have regard to all the circumstances, including –
(a) the conduct of all the parties;
(b) whether a party has succeeded on part of its case, even if that party has not been wholly successful; and
(c) any admissible offer to settle made by a party which is drawn to the court’s attention, and which is not an offer to which costs consequences under Part 36 apply."
He also considered CPR36.17 (1):
"(3) Subject to paragraphs (7) and (8), where paragraph (1) (a) applies, the court must, unless it considers it unjust to do so, order that the defendant is entitled to—
(a) costs (including any recoverable pre-action costs) from the date on which the relevant period expired; and
(b) interest on those costs."
He referred to para [43] of Lord Justice Coulson's judgment in Lejonvarn v Burgess [2020] EWCA Civ 114:
"…a defendant (such as the appellant in the present case) who beats his or her own Part 36 offer, is not automatically entitled to indemnity costs. But a defendant can seek an order for indemnity costs if he or she can show that, in all the circumstances of the case, the claimant's refusal to accept that offer was unreasonable such as to be 'out of the norm.' Moreover, if the claimant's refusal to accept the offer comes against the background of a speculative, weak, opportunistic or thin claim, then an order for indemnity costs may very well be made. That is what happened in Excelsior.”He also mentioned
para [80] of the same judgment:
"When a defendant beats its own Part 36 offer, the court should always consider whether, in consequence, the claimant's conduct in refusing that offer took the case out of the norm. Sometimes it will; sometimes it won't. Mr Cohen articulated the question that had to be asked in these terms:Mr Alexander directed himself as follows at para [31] of his judgment:'At any stage from the date of the offer to the date of the outcome, was there a point when the reasonable claimant would have concluded that the offer represented a better outcome than the likely outcome at trial?'”
"The court is obliged to consider 'all the circumstances of the case' but these fall predominantly into the categories of:-
1. Conduct before and during the proceedings (Part 44.2 (5) (a))
2. The reasonableness of the claimant's decision to pursue a particular allegation or issue (Part 44.2 (5) (b))
3. The manner in which a claimant has pursued its case (Part 44.2 (5) (c))
4. The extent to which a claimant has exaggerated its claim (Part 44.2 (5) (d)),"
The deputy judge considered paras [31] and [32] of the Lord Chief Justice's judgment in Excelsior Commercial & Industrial Holdings Ltd v Salisbury Hammer Aspden & Johnson and another [2002] EWCA Civ 879:
"[31] … those paragraphs set out the need for there to be something more than merely a non-acceptance of a payment into court, or an offer of payment, by a defendant before it is appropriate to make an indemnity order for costs…However, I would point out the obvious fact that the circumstances with which the courts may be concerned where there is a payment into court may vary considerably. An indemnity order may be justified not only because of the conduct of the parties, but also because of other particular circumstances of the litigation. I give as an example a situation where a party is involved in proceedings as a test case although, so far as that party is concerned, he has no other interest than the issue that arises in that case, but is drawn into expensive litigation. If he is successful, a court may well say that an indemnity order was appropriate, although it could not be suggested that anyone's conduct in the case had been unreasonable. Equally there may be situations where the nature of the litigation means that the parties could not be expected to conduct the litigation in a proportionate manner. Again the conduct would not be unreasonable and it seems to me that the court would be entitled to take into account that sort of situation in deciding that an indemnity order was appropriate.
[32] I take those two examples only for the purpose of illustrating the fact that there is an infinite variety of situations which can come before the courts and which justify the making of an indemnity order…This court can do no more than draw attention to the width of the discretion of the trial judge and re-emphasise the point that has already been made that, before an indemnity order can be made, there must be some conduct or some circumstance which takes the case out of the norm. That is the critical requirement."
Finally, Mr Alexander referred to Lord Justice Christopher-Clarke's judgment in Excalibur Ventures LLC v Texas Keystone Inc and others [2013] EWHC 4278 (Comm) which set out relevant factors when deciding the incidence of costs:
"(a) advances and aggressively pursues serious and wide-ranging allegations of dishonesty or impropriety over an extended period of time.
(b) advances and aggressively pursues such allegations despite the lack of any foundation in the documentary evidence for those allegations and maintains the allegations without apology to the bitter end.
(c) actively seeks to court publicity for its serious allegations both before and during the trial.
(d) turns a case into an unprecedented factual inquiry by the pursuit of an unjustified case.
(e) pursues a claim which is to put it most charitably thin, and in some respects far-fetched.
(f) pursues a claim which is irreconcilable with the contemporaneous documents.
(g) commences and pursues large scale and expensive litigation in circumstances calculated to exert commercial pressure on a defendant and during the course of the trial of the action the claimant resorts to advancing a constantly changing case in order to justify the allegations which it had made, only then to suffer a resounding defeat." (see also European Strategic Fund Limited v Skandinaviska Enskilda Banken AB [2012] EWHC 749 (Comm)).
In deciding whether it had been unreasonable for Warren to have refused Lidl's offer of settlement in Oct 2020 the deputy judge traced the history of the litigation. The action had begun on 22 Nov 2019 with a 400 page letter before claim seeking damages of £47 million more than 4 years had elapsed since the first marketing of meat in the Warren & Sons branding. Lidl asked for time to consider the letter which Warren refused launching proceedings without further warning, Shortly before Lidl made its offer, Warren offered to settle its claim for just under £28.7 million. On 29 Jan 2021, Warren made a further offer to settle for £15 million.
Although he considered it regrettable that Warren did not accept Lidl's offer of settlement, he did not regard Warren's refusal as sufficiently unreasonable to justify an award of costs. Lidl also relied on 11 other factors which are listed in para [44] of Mr Alexander's judgment. These did not change his assessment whether taken individually or collectively. The learned deputy judge's reasoning at [46] is instructive:
"First, it may have been better and possibly more productive of an early settlement had the litigation been conducted at lower intensity, including as to choice of court. However, that may be a characteristic of litigation which is conducted by a metaphorical “little person” against a “big corporation” where a claimant feels the need to shout to be heard. Second, until its October 2020 offer, Lidl had not undertaken not to use WARREN & SONS again and had not surrendered the registered trade mark. Third, to some extent, Lidl brought this case upon itself by its branding strategy which involved choosing a fictional brand to make its products more attractive and not troubling too much about whether it might affect the business of an undertaking with a similar name. There is nothing which required Lidl to take that approach to branding and the brand has now changed. Fourth, some (including me and perhaps even Lidl, since they were prepared to make a substantial offer to settle the case in October 2020) thought the case far from hopeless. Fifth, having heard from Mr Ian Warren, I am satisfied that [Warren] had reasonable motives for bringing the case."
Damages Based Agreements ("DBA")
Warren's legal representatives had been retained under an agreement to share any damages that might be recovered from Lidl. Such agreements had been made possible by s.45 of the Legal Aid, Sentencing and Punishment of Offenders Act 2012. In written submissions after the hearing, Lidl criticized such agreements on the grounds that such funding was capable of creating or increasing incentives to pursue speculative or opportunistic litigation. Lidl argued that the pursuit of litigation on that basis might create scenarios in which cases would become harder to settle because one side was at “no risk of loss on damages while pursuing a claim with the chance of vast winnings”.
Mr Alexander rejected that argument at para [52] of his judgment:
"I think there is a further factor in play here, as the authorities cited by the parties suggest. Historically, it was regarded as contrary to public policy for lawyers to engage in what are kinds of joint venture to pursue claims, making payment for legal services contingent upon the outcome. However, with diminishing public financing for claims, the approach to financing litigation has liberalized considerably, first to enable cases to be brought using conditional fee agreements and, more recently, permitting certain DBAs. The litigation financing market has also developed, with undertakings using claims as (sort of) investment vehicles. Without getting into the myriad complexities of the justification for these approaches and the, often difficult, economic (including game theoretic) issues which these can raise, there are two broad reasons why that is desirable. First, it can enable access to justice, permitting cases to be brought which would otherwise not be maintainable because of the risks and costs involved. That can ensure that, in particular, smaller litigants which may be less able to bear the risks of uncertain litigation are placed on a more equal footing with larger undertakings. Second, it accords more with principles of freedom of contract."
Warren's Claim to a Reduction of Costs
Warren sought a reduction of costs on the basis that it had succeeded on several issues in the litigation and that Lidl had refused to mediate. The deputy judge held that Warren was entitled to the costs of the counterclaim which it had won but he did not consider that Lidl had acted unreasonably in refusing to mediate. His award to Lidl of 90% of its costs on the standard basis reflected his findings.
Assessment
There is a table at para [108] of Mr Alexander's judgment in which he set out Warren's costs against Lidl's at each stage of the litigation together with his assessment. Warren's costs of the whole action amounted to £483,057 while Lidl's totalled £777,690. The deputy judge assessed Lidl's costs at £646,428 which he reduced to £581,785 to take account of the 10% reduction for Warren's success on the counterclaim.
Publicity Order
In the letter before claim and subsequent correspondence, Warren's solicitors had warned Lidl of the potential reputational damage that it might incur were it not to settle. They added that they would seek a publicity order were Warren to win. After trial but before judgment a journalist from The Mail on Sunday approached Warren's solicitors to discuss IP litigation in general. Someone in the firm gave the journalist a copy of the claimant's but not the defendants' skeleton argument. The journalist wrote the article that is annexed to the judgment. Similar articles appeared in the Western Morning News, Cornish and Devon Post, Cornish Herald, Plymouth Herald, Meat Management Magazine, MSN Lifestyle, Cornwall Live, Plymouth Live, Meat Management Magazine Online and the Western Daily Press. The overall impression conveyed by the article was that Lidl’s conduct was much worse than that of other retailers in that it had deliberately targeted the claimant and had done nothing about it.
Mr Alexander referred to Samsung Electronics (UK) Ltd v Apple Inc [2013] FSR 9, [2013] EMLR 10, [2013} FSR 9, [2013] ECDR 2, [2012] EWCA Civ 1339 and HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 510 (Ch)) from which he discerned the following principles at para [167]:
"a. There is an equitable discretionary power under s.37 of the Senior Courts Act 1981 to make publicity orders in favour of a successful defendant when it is just and convenient to do so.
b. Publicity orders should not be the norm and should only be granted when it is necessary and proportionate.
c. The test in the case of an order sought with respect to a non-infringing product is whether there is a need to dispel commercial uncertainty in the marketplace.
d. The purpose of such an order is not to punish a party, make it “grovel” or lose face. In particular, it is not right to condemn a party to public humiliation before it has had an opportunity to argue its case on appeal.
e. Where the need to do so arises as a result of inaccurate reporting by journalists, a party will only be held responsible for such (and therefore liable to seek and pay for the publicity ordered to be provided) if it contributed to that inaccuracy by inaccurate statements and false innuendo.
f. The effect of the authorities is that the court is also likely to take into account the following factors:i. The extent of publicity given to the case and its outcome, apart from the publicity order;
ii. Whether any decision the subject of a publicity order may be subject to appeal;
iii. The extent to which there is or may be a dispute or agreement over the terms in which any notice should appear;
iv. Whether the order would involve more than a measured incursion into any publication’s freedom to decide what it publishes and does not publish, and is justified in pursuit of a legitimate aim."
Even though they were not the subject of express prior guidance, he directed himself at [168] that it was appropriate to take the following further factors into account:
"i. Whether it is straightforward adequately to encapsulate the effect of a court decision in a brief notice or whether balance requires more by way of narrative;Lidl submitted that there was a clear case for a publicity order. The articles had given an unfair impression of Lidl’s conduct which had contributed to significant adverse comment. The outcome of the case had not received widespread publicity. Unless a publicity order was made, the public would be left with an impression that Lidl was guilty as charged. Warren replied that the threshold requirements for making a publicity order against it had not been satisfied. This was not a case where there had been widespread infringement. Lidl had stopped using the Warren & Sons mark. The decision might easily be reversed on appeal. The press reports may not have been even-handed but they had not been untruthful.
ii. The risk that the order may result in an inaccurate impression, including as to whether the court has endorsed or criticized the conduct of the parties or third parties;
iii. The overall effectiveness and impact of a publicity order at remedying the matter said to require such an order;
iv. Whether other practical and legal remedies are or may be available to address the issue;
v. What impact a publicity order may have on third parties;
vi. Whether a publicity order made at a given stage in the proceedings, if they have not reached finality, would risk creating a further issue which may make it harder for the parties to settle a case, especially if the parties have indicated a wish to do."
Mr Alexander said that there were strong arguments in favour of a publicity order even though this was different from the usual case in such orders are made but declined to make one. It was uncertain that such an order would be effective or benefit the defendants. There was also the possibility that his judgment would be reversed on appeal. There had been no impropriety on Warren's part or that of its solicitors. A publicity order might also impede settlement.
The deputy judge has given permission to appeal with some hesitation. He explained his reasoning at para [196] of his judgment:
"There is, however, in the law of passing off a potential debate as to how serious/intensive/frequent/damaging possible confusion must be before it will be treated as actionable. In my view, the evidence did not show that it was likely to be sufficiently serious/intensive/frequent/damaging but was, at best, limited short-lived, sporadic and with no real impact. However, this is an area of law in which precisely where courts place the lower boundary of seriousness can determine whether claims are plausible or not. That is a legitimate subject of appellate consideration, notwithstanding my view that this case does not get to that level."
Costs of the Conseuentlial Hearing
Mr Alexander departed from the usual practice of including the costs of the consequential hearing in the costs of the trial by ordering each party to bear its own. That was because Warren had successfully resisted the publicity order and the application for indemnity costs.
Comment
The judgement following the consequential hearing is considerably longer than the judgment following the trial. That is not because the issues on passing off had been straightforward. Mr Alexander has helpfully clarified the substantive law. The reason why the 26 Aug judgment is so long is because of the multiple points raised on costs and the approach to a publicity order. all of which are set in context. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.
