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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> British Sky Broadcasting Plc v Sky Home Services Ltd [2008] EWCA Civ 1101 (03 July 2008) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2008/1101.html Cite as: [2008] EWCA Civ 1101 |
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A3/2007/0592A |
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR JUSTICE BRIGGS)
Strand, London, WC2A 2LL |
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B e f o r e :
(SIR ANDREW MORRITT CVO)
LADY JUSTICE ARDEN
and
LORD JUSTICE DYSON
____________________
BRITISH SKY BROADCASTING PLC |
Appellant |
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- and - |
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SKY HOME SERVICES LTD |
Respondent |
____________________
WordWave International Limited
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7404 1400 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Macpherson
(instructed by Johnson Sillett Bloom) appeared on behalf of the Appellant.
Mr T Moody-Stuart (instructed by Herbert Smith) appeared on behalf of the Respondent.
____________________
Crown Copyright ©
Lady Justice Arden:
"17. The claimants' case is that collectively they enjoy substantial goodwill associated in particular with the word SKY both on its own and as part of words and phrases such as SKYCARE, SKY PLAN and SKY REPAIR PROTECTION PLAN, and that the defendants both singly and collectively have been passing off their extended warranty and repair services as if the defendants and their businesses were either part of the Sky Group and its businesses, or authorised, endorsed or approved by the Sky Group as extended warranty providers.
18. The defendants are alleged to have achieved this objective in three main ways, first, by the use of corporate names which either include SKY or the related phrases which include SKY, or by the use of a name (that of D3) confusingly similar to SSS, albeit without the use of the word SKY. A similar complaint is made of the use of "Subscriber Services" as a trading name by a number of the corporate defendants. Secondly the claimants complain of the misleading form and content of written marketing material designed, produced and published by various defendants. Thirdly, complaint is made of the misleading conduct of the large telephone sales force employed by DD8 and 9.
19. Although the defendants may be divided into the two distinct groups which I have described, the claimants seek to characterise the matters of which they complain as the outward and visible sign and product of a common tortious design by all of them. They assert a joint and several liability against each defendant in respect of every act of passing off relied upon.
20. The claimants seek comprehensive injunctive relief to prevent future passing off, and claim compensation in respect of past passing off. They have yet to elect between an account and damages, and disclosure designed to facilitate that election has yet to be ordered or given. Although this is a liability only trial, consequential damage is an essential part of the cause of action, so some must be proved. Furthermore, consideration of the question whether an injunction should be granted, (rather than, for example, a declaration with liberty to apply for an injunction), and the precise terms of any injunction, requires a detailed analysis of the nature and extent of any proven passing off and (if joint liability is not established) an identification of the defendants liable for it."
"87A Further, the Defendants and each of them have procured the making of oral misrepresentations as to a connection in the course of trade between the Defendants and the Claimants.
Defendants' Oral Misrepresentations.
88. Since at least 2004 the Defendants and/or their employees or agents have orally been using the Sky Marks and/or have made certain other oral statements in relation to the Defendants' extended service plans, in conjunction with the Marketing Materials A to H referred to above, in a manner that constitutes a misrepresentation to the customer that the service plan is offered by and/or on behalf of the Claimants and/or are connected or related to the Claimants and/or are authorised, endorsed and/or approved by the Claimants.
89. Further since at least 2001, the Defendants, and in particular the Eighth and Ninth Defendants, have contacted Sky Subscribers directly by telephone to offer them an extended service plan for their Reception Equipment, and have used Sky Marks, and/or made certain other statements, in a manner that constitutes a misrepresentation to the customer contacted that the service plan is offered by and/or on behalf of the Claimants and/or are connected or related to the Claimants and/or are authorised, endorsed and/or approved by the Claimants."
"To the best of the Claimants' knowledge and belief, the Defendants are continuing to engage in telephone calls and utilise recorded messages that amount to misrepresentations in the manner set out in paragraph 90 above."
"The oral evidence on this issue tended to confirm the defendants' pleaded denial of any such common enterprise, subject to two potential exceptions. The first is that one of the claimants' subscriber witnesses, Ricky Baxter, said that he had been sent a copy of MM H (for which the Crane defendants alone accept responsibility) in response to his request for documents in a call initiated by a D9 sales agent. In cross examination, however, Mr Baxter accepted that he might have been wrong to make the assumption that the trigger for the sending of the material was his request. In my judgment he was wrong."
"There was no overarching common design at any stage, for the reasons already given, despite the close cooperation between the two groups of defendants from time to time."
"The whole of my clients' costs should be paid by the claimants. That suggestion is based on the simple fact that the claimants could have had what they have got now long ago. The crux of the matter is that the alleged association or conspiracy with the Reynolds Defendants -- that is what took up a significant amount of Court time. The claimants have failed to prove that such a connection exists or existed. The only other issue of significance was the liability of the Reynolds defendants which was not an issue which the Crane defendants were, as it turned out, anything to do with."
So Miss Sillett there, as I read her witness statement, is saying that the common design claim took up a significant amount of court time and that there was the additional claim -- the telemarketing claim -- in which it had turned out the Crane defendants were not involved, and she sought an order that the costs of the Crane defendants should be paid by the claimants.
"The trial lasted 15 days (excluding post-judgment hearings) of which my client's defence occupied the court (at most) for half a day. This represents less than 3.5% of the time in court. This is also reflected in the proportion of time spent in pre-trial preparation. I would therefore suggest that the percentage of the Claimants' costs payable by my clients' be in the region of 4% of their overall costs of this action.
In my clients view any such award should be set off against my clients costs. Those costs being the cost of defending the Claimants' failed allegation of joint tortfeasorship with the 8th to 10th Defendants and their complete failure to establish any claim against the Sixth defendant, Mr Peter Crane."
So at that stage she is submitting to the court that the responsibility of the Crane defendants for costs was very small -- she puts it at 4% -- and that there ought to be a claim; there ought to be an order for the costs of the Crane defendants against the claimants; and that the two orders should be set against each other.
"10. The financial impact of the alleged link with the Reynolds Defendants is, to some extent, obvious. I believe however that a specific illustration of its effect on time and costs incurred by the Crane Defendants should be given. The most striking example of the wasted time and costs incurred that was taken up by my firm, Counsel and my clients was in relation [to] the recording, transcription, re-transcription and analysis of the Reynolds' telephone marketing procedures. That investigation not only involved a vast amount of time in considering documents leading up to and during the trial but it also took up a large proportion of the time in court listening to oral evidence.
11. It is very difficult for me to be totally accurate about the dates upon which much of this documentation was received because boxes often arrived by courier or out of hours when I was not in the office. I can however confirm that between the 19th October 2006 and 6th November 2006 I received and copied to Counsel and my client 18 lever arch files of documents from the Reynolds' solicitors. Those files were transcripts and other documents relating to telephone marketing. We were obliged to read them because the Claimants accused my clients of being responsible for that activity.
12. The situation worsened as the trial progressed. During the course of the hearing we received a further 12 lever arch files relating to telesales. Again all that had to be read. None of the "customer" witnesses were relevant to the Crane Defendants apart from Mr Baxter who failed to prove the (tenuous as it was) link with the Reynolds Defendants which the Claimants claimed.
13. I have already referred to the pre-action correspondence. The Claimants were left in no doubt that the link between the two sets of defendants was denied and they were put to proof. With a certain degree of arrogance the Claimants refused to address that essential requirement. They didn't mind if they dragged a small business and two individuals in to a major action which had only a tiny amount of relevance to them. This is something which the Claimants can of course afford to do."
"So the total costs, if you like, are Z. X, Reynolds defendants. Y, the Crane defendants and you think you say any arguments on losing on issues and so forth should be reflected in a percentage of, if any, X and a percentage off Y."
That was summarising the submission of Mr Moody-Stuart for the claimants. Then, again, at page 34 the judge made it clear that he was approaching questions of costs "on the assumptions that each group of defendants, that is the Reynolds and Crane defendants will pay separate proportions adding in the aggregate to a 100 per cent of the claimants' costs subject to deductions attributable to the merits and other aspects of the matter".
"…was a significant issue…it may have real consequences in terms of financial liability and it is one which ought to be reflected in a modest discount and I propose to discount 10 per cent of the attributable costs on account of the claimants' failure on the common design issue."
That appears at page 35 to 36 of the transcript.
"The second point is in relation to the customer evidence, the members of the public. My Lord, there was one issue in relation to one witness, who was Mr Baxter, your Lordship recalls [that] he… received two sets of documents and the assertion was that it was a Crane document being sent to a Reynolds customer and that assertion was not made good, so we succeeded as against that witness in being able to prove that that did not establish [and then there appears a full stop and the end of quotation]"
It is clear that counsel was referring to the fact that the claimants had failed to establish direct liability for passing off in relation to telemarketing, as against the Crane defendants. He did not, as I say, need to elaborate that point further as the judge would have been well aware from his judgment what evidence was being referred to. The judge, however, concluded that the correct proportion between the two defendants was 30% to 70%.
"Apart from that Mr Roughton submitted that the effect of pursuing a case jointly against both groups of defendants was that his clients, the Crane defendants, found themselves having to endure a substantial trial running into some weeks, whereas if they had proceeded against [the Crane defendants alone] it would have taken a day to a day and a half and he submitted this should be reflected in costs.
In my judgment that is sufficiently reflected in the 70 per cent/30 per cent apportion, which I have already made. It seems to me to be no fault of the claimants that the claim against the two groups of defendants was heard together."
So the judge was simply there dealing with the argument that the Crane defendants had had to be there during the trial of the allegations made more particularly against the Reynolds defendants in respect of telemarketing. The judge held that that matter had been taken into account in his apportionment.
Lord Justice Dyson:
Sir Andrew Morritt:
Order: Application granted; appeal allowed.