Trials and appeals: no dress rehearsal or island-hopping, warns judge

In '"No whey" as Chobani feels the strain in Greek yoghurt appeal', here, this Kat reviewed the most recent, and possibly the most outspoken, statements of a British court with regard to the ever-evolving tort of "extended passing off" in Fage UK Ltd & Another v Chobani UK Ltd & Another [2014] EWCA Civ 5 (28 January 2014).  Now that the dust is seemingly starting to settle on that decision, this Kat would like to advert to one small aspect of the Court of Appeal's decision that has so far attracted relatively scant attention.  It will be found in the judgment of Lord Justice Lewison and it reads like this (shorn of citations):
"Appeals on fact

114. Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to the evaluation of those facts and to inferences to be drawn from them. [He lists five of the "best known", which include just one IP case: Biogen Inc v Medeva plc [1996] UKHL 18, but mis-cited as [1977] RPC 1]. These are all decisions either of the House of Lords or of the Supreme Court. The reasons for this approach are many. They include
(i) The expertise of a trial judge is in determining what facts are relevant to the legal issues to be decided, and what those facts are if they are disputed [This is, or should be, particularly the case with IP litigation, where appeals lie from a specialist judge to a Court of Appeal in which, if there is an equivalent specialist at all, he may be in the minority.  Fage v Chobani is however the other way round: the trial judge was not an IP specialist, but two of the three Court of Appeal judges were].

(ii) The trial is not a dress rehearsal. It is the first and last night of the show [Well said, but this Kat isn't sure whether this comment is being made to the appeal court judges -- who are clearly tempted to reinterpret the script of the first performance -- or to litigants who fuel this temptation by raising arguments or seeking to admit evidence on appeal which the trial judge may have had little or no chance to contemplate].

(iii) Duplication of the trial judge's role on appeal is a disproportionate use of the limited resources of an appellate court, and will seldom lead to a different outcome in an individual case [but it does happen: Lumos Skincare v Sweet Squared, noted here by the IPKat, happened less than a year ago. Do take a look at the scathing comments of Sir Bernard Rix, dissenting. Another classic example is Designer Guild v Russell Williams, here, where the House of Lords had to repair the damage done by the Court of Appeal].

(iv) In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping [a cute metaphor, says Merpel, but is it a meaningful one?].

(v) The atmosphere of the courtroom cannot, in any event, be recreated by reference to documents (including transcripts of evidence) [indeed not, but this arguably cuts both ways].

(vi) Thus even if it were possible to duplicate the role of the trial judge, it cannot in practice be done.
"Just because I don't have to give all my
reasons doesn't mean that I have any ..."
115. It is also important to have in mind the role of a judgment given after trial. The primary function of a first instance judge is to find facts and identify the crucial legal points and to advance reasons for deciding them in a particular way. He should give his reasons in sufficient detail to show the parties and, if need be, the Court of Appeal the principles on which he has acted and the reasons that have led him to his decision. They need not be elaborate. There is no duty on a judge, in giving his reasons, to deal with every argument presented by counsel in support of his case [as many a fine counsel will happily testify]. His function is to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury [another reason for not having jury trials in IP litigation?]. Nor need he deal at any length with matters that are not disputed. It is sufficient if what he says shows the basis on which he has acted. These are not controversial observations ...
116. ... The judge heard evidence over seven days and read a mass of material. I would therefore be most reluctant to disturb any of his findings of fact (whether primary or evaluative) unless compelled to do so. ...

117. ... some criticism was levelled at the judge for not having dealt more comprehensively with the ingredients that needed to be proved in order to maintain a successful claim in passing off. But the judge's judgment must be read against the background of what was actually in dispute between the parties. He dealt with the matters that were in dispute, and if he did not dot every i and cross every t in relation to what was not disputed, I do not consider that that is a valid ground of criticism".
This Kat is pleased to see the respective roles of trial judge and appeal court discussed here, since the tendency of British appellate courts to tinker with findings of fact in IP litigation has been occasionally hard to resist.  It would be better, though, if we had a clear expression of commitment to the principles articulated above, one that was issued as a practice statement from the court as a whole and not from a single judge, and one that was expressed in unequivocal terms without the distraction of metaphor.

Merpel adds: "likelihood of confusion" is an interesting topic, since some countries treat it as a question of fact while others see it as a question of law.  If the former, it should be safer from review by an appellate court than if it is the latter.
Trials and appeals: no dress rehearsal or island-hopping, warns judge Trials and appeals: no dress rehearsal or island-hopping, warns judge Reviewed by Jeremy on Wednesday, February 19, 2014 Rating: 5


  1. Our Courts have been running in various forms since the Norman Conquest, so getting on for 950 years now.

    You would have thought that we could have sorted out what the role of an Appeal Court is by now?

  2. I've just noticed - the typo made in the citation of Biogen Inc v Medeva plc ([1977] RPC 1 instead of [1996] UKHL 18) is exactly the same as the typo made by Sir Bernard Rix in the LUMOS case.

    Fage & Chobani does not cite LUMOS, but I wonder if some note was taken?

  3. On Merpel's final comment - it may be safer to treat 'likelihood of confusion' as a question of fact, but it is far more interesting, and arguably magnanimous, to treat it as a question of law.

  4. It is not always treated that way by counsel, who may seek to run the case again as if from fresh.

  5. Thank you, Patently, for your acute observation. I hadn't spotted the source of Sir Bernard Rix's error -- but that's because, being slightly dyslexic, recalling roughly when Biogen v Medeva was being litigated and currently struggling with cataracts, when reviewing Lumos I read "1977" as "1997".

  6. RPCs are not quite the same as court decisions - they also include a bit of commentary. Unless I am very much mistaken, [1997] RPC 1 and [1996] UKHL 18 are both the same Biogen Inc v Medeva plc decision - the typo is smaller than your blog post suggests.

    Is there any reason why the RPCs are not available on the Internet?

  7. Jeremy ,

    Regarding s.10 (3) TMA , when is the relevant point in time that you need to calculate reputation to? Is it like 5(3) TMA, ie the filing date of the later mark?

    What if the later mark is also registered , would you only be able to show reputation of earlier registered mark up to filing date of the later mark?

    Was hoping Westwood v Knight would deal with this. But does not.


  8. To anonymous 19 Feb 22:57

    The RPCs don't intentionally carry commentary; the law reports published in them contain headnotes which are intended to offer no more than a convenient precis of the decision that follows, giving the ruling of the court, the cases and legislation cited and the representation on both sides.

    Why are RPCs not available on the internet? They are! Here's their website:

    The subscription price is quite high, but almost all the cases reported are available free, without headnotes, on BAILII, the UK IPO website, Curia or elsewhere.

  9. To anonymous 19 Feb 22:57

    I forgot to deal with one of your other points. You write "Unless I am very much mistaken, [1997] RPC 1 and [1996] UKHL 18 are both the same Biogen Inc v Medeva plc decision - the typo is smaller than your blog post suggests".

    You are right that [1997] RPC 1 and [1996] UKHL 18 are the same case -- but wrong about the typo. The erroneous reference was to [1977] RPC 1, not [1997] RPC 1, and was thus 20 years out.

  10. To Jonathan:
    You write "Regarding s.10 (3) TMA , when is the relevant point in time that you need to calculate reputation to? Is it like 5(3) TMA, ie the filing date of the later mark?"
    My understanding is that under s.10(3) you have to show reputation of the earlier mark which is operative at the time of the commencement of the alleged infringement

    You also ask: "What if the later mark is also registered, would you only be able to show reputation of earlier registered mark up to filing date of the later mark?"
    Are you thinking of an infringement action or opposition or cancellation proceedings? In my opinion, reputation of the earlier mark would in principle need to be shown to exist at the date of filing of the later mark in the case of an opposition or cancellation proceedings -- but no case reference immediately springs to mind so I may be proved wrong by some helpful reader.


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