Judicial fur flies as skin and nail ruling is overturned

Catnails by Mr Candiipants here

The IPKat is very proud of his nails, which he prunes on a regular basis so as to make them serviceable for blogging and other worthy causes (sharpening them on his favourite victims has been found most efficacious in most circumstances).  He was therefore intrigued to discover that nail care lay at the heart of a recent passing off appeal: Lumos Skincare Ltd v Sweet Squared Ltd & Others [2013] EWCA Civ 590, this being a decision of the Court of Appeal for England and Wales (Lords Justices Lloyd and McFarlane, plus Sir Bernard Rix) that dates way back to 6 June. What was it all about?

Lumos, a company that distributed skin care products under the word LUMOS, which was not a registered trade mark, objected to the sale of nail care products under the word LUMOS by Sweet Squared. Both parties' products were used in beauty salons and. Lumos also had some retail sales, whereas Sweet Squared made few such sales. According to the trial judge, two of the three elements of passing off were present, but that there had been no misrepresentation leading the public to believe that Sweet Squared's products were those of Lumos: Sweet Squared had only modest goodwill in the LUMOS mark by the time Sweet Squared began selling its products, and that goodwill did not extend beyond a particular niche within the market. According to the trial judge, skin care and nail care were distinct market sectors, and brands within those sectors could operate in both professional and consumer markets; the strongest evidence of confusion among customers was an email sent to Lumos by Sonia McMilla, the operator of Cloud Nine Day Spa, who had encountered the LUMOS nail product range and asked whether that was a different branch of the company. This email read as follows:

We are hoping to go live with our website to sell you products. My concern is having discussed that you only have 4 products you seem to have a nail product range. (As per Lumos^TM in professional beauty) Is this a different branch of the company? When I spoke to you last year you said you were thinking of including a cleanser and toner as a possibility but even in this climate might prove a waste so it was not something that was in the pipeline. Where do the nail products come in to it? I look forward to hearing from you but please be aware I am on holiday for 3 weeks as from this weekend

The judge held that the email showed that she was merely wondering whether there was a connection with Lumos, who had not called her as a witness which was a pity because cross-examination of him would have shed light on the issue.

The Court of Appeal (with Sir Bernard Rix dissenting) allowed Lumos's appeal.

Following a full and detailed review of the facts, the majority considered that the trial judge had misapplied them; they disagreed in particular with his conclusion regarding the evidential value of the email from Sonia McMillan, saying that it demonstrated that she thought there was a connection between Lumos and Sweet Squared and expressing surprise that the trial judge should have criticised the failure of Lumos to call the email's author as a witness.

Leaving aside this email, there was no evidence of actual deception -- but this was hardly surprising since there had not been any instances of side-by-side sales and the absence of such evidence was not determinative. In this case, therefore, whether Sweet Squared's use of the word LUMOS was likely to mislead was a matter of inference,

A distinction did exist between nail care and skin care in the beauty industry but, from the point of view of Lumos's customers, what mattered more was that nail care products, including Sweet Squared's, were used, promoted and sold in the same salons as Lumos's skin care products: this was a factor which the trial judge  failed to appreciate and the defence that there could have been no misrepresentation because the products were found in different markets should not have been accepted. Bearing this in mind, the trial judge should have accepted that Lumos had made out its case.

Although there were constraints on an appellate court when invited to depart from factual conclusions of the judge below, the judge's conclusions against adverse to Lumos were vitiated by his inconsistent treatment as between trade customers and end-users and by his other errors. Accordingly the Court of Appeal could remake the decision. As Lloyd LJ said:

1. I am conscious of the constraints on an appellate court which is invited to depart from a conclusion of the judge below which is one of fact, or is based on findings of fact, even though (as here) not findings of primary fact based on an assessment of the credibility of witnesses. It seems to me, with respect, that the judge's conclusions adverse to the Claimant are vitiated by his inconsistent treatment as between the Claimant's trade customers and the end-users of the Claimant's products, and by other errors to which I have referred, including his failure to take account of the use of the same brand name for skincare and for nail care products.


2. For reasons which are entirely understandable we were discouraged from sending the case back for a re-trial if we found that the judge had misdirected himself. In any event it seems to me that, when the evidence is considered closely and with the benefit of the submissions made to us, there is sufficient material before the court to enable us to come to our own conclusion as to the correct inference, the judge having failed to do so because of his misdirection of himself as to, among other things, the relevant market, the significance of Ms MacMillan's email and the identity of the Claimant's actual and potential customers upon whom the likely effect of the Defendant's representation ought to be judged.

Sir Bernard Rix disagreed. In his view, which was persuasively and trenchantly expressed, the case had effectively been retried by the Court of Appeal, which was a no-no as the House of Lords had clearly said in two earlier IP cases, Biogen Inc v. Medeva Plc and Designers Guild Ltd v. Russell Williams (Textiles) Ltd. It was not for an appeal court to interfere in what were essentially jury questions, save on plain legal grounds. It was therefore wrong for the Court of Appeal, against the judge's findings, to find for itself a case of passing off on the thinnest of evidence.

This Kat understands the position of both camps here, but feels that Sir Bernard has got it right.  The decision under appeal was not a full-blooded piece of litigation before the Chancery Division of the High Court: it was a bit of litigation-lite before the low-cost, relatively informal Patents County Court; there were just two hearing days and the decision was delivered less than eight weeks after the hearing. Is this really the sort of litigation that the Court of Appeal, with the benefit of collegiate consulting as between the three learned judges, was intended to treat to its infinite scrutiny and then effectively rehear?

Merpel notes that, curiously, both the majority and the minority invoked the judgment of Jacob J (as he then was) in Neutrogena Corporation v Golden Ltd [1996] RPC 473 in support of their respective views.