Case No.HC12C01378
Neutral Citation Number: [2013] EWHC 1945 (Ch) 
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION 
INTELLECTUAL PROPERTY 
Royal Courts of Justice
Rolls Building

Date: Friday, 5th July 2013
Before:
MR. JUSTICE BIRSS
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B E T W E E N :
	(1) ROBYN RIHANNA FENTY
(2) RORAJ TRADE LLC
(3) COMBERMERE ENTERTAINMENT PROPERTIES, LLC	Claimants	
	- and -		
	(1) ARCADIA GROUP BRANDS LTD (t/a TOPSHOP)
(2) TOPSHOP/TOPMAN LIMITED	Defendants	
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MR. M. HOWE QC and MR. A. NORRIS (instructed by Reed Smith) appeared on behalf of the Claimants.
MR. G. HOBBS QC and MR. H. CUDDIGAN (instructed by Mishcon de Reya) appeared on behalf of the Defendants.
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J U D G M E N T
MR. JUSTICE BIRSS: 
1	1 At the start of 2011, Topshop sold a T-shirt which carried a picture of the famous pop star Rihanna on it.  The image was the subject of a copyright licence from the owner of the copyright in the photograph (not Rihanna), but no permission from Rihanna or from any company deriving rights from her was obtained. 
2	As is common in the music business, Rihanna's trading activities include a substantial merchandising operation selling authorised merchandise, including images of the star herself.  Rihanna's full name is Robyn Rihanna Fenty, she is the first claimant.  The other claimants are companies through which she carries out her licensing and merchandising business.  The defendant runs Topshop. 
3	The claimants sued for passing off and trademark infringement.  The trademark claim is settled.  The passing off claim is due to come to trial in two weeks' time, floating from 15th July.  The essential question in the claimants' claim in passing off is whether, by virtue of the use of the image on the T-shirt, purchasers will be likely to be deceived into believing that the T-shirt is approved or connected with or authorised by the claimant.  I should say that there is no doubt that the image is recognisably Rihanna. 
4	At the case management conference Master Marsh set a timetable for witness statements of witnesses of fact, with statements due in December 2012.  The parties were given permission to apply for directions about expert evidence.  No directions were applied for, so neither party has permission to rely on expert evidence. Witness statements were exchanged on 13th June 2013; the shift from December arose as a result of general delays arising from disclosure and two requests for extensions of time from the defendants. 
5	On 26th June the defendant's solicitors objected to a large part of the claimants' evidence: five witness statements in their entirety and parts of the statement of the claimants' main witness, Ms. Perez.  The five witness statements are Mr. Coyle, Mr. Daffner, Mr. Dapron, Mr. Joseph and Mr. Robinson.  The evidence objected to is what is often called trade evidence.  The five witnesses all describe their experience in their particular businesses, and then describe that field and make various statements which I will come back to.  All five witnesses have experience in licensing and merchandising.  The focus of Mr. Coyle and Mr. Daffner is in the clothing and fashion sphere, while the focus of Messrs. Dapron, Joseph and Robinson is in the music business.  Ms. Perez is the main witness for the claimants, as I have said.  In effect she acts as a mouthpiece for Ms. Fenty. She also explains her experience in the merchandising side of the music business and makes statements about that trade. 
6	The main objection is that the evidence is expert evidence which is inadmissible without permission and no permission has been sought.  The defendant also contends that the evidence is objectionable because it is expressing an opinion about what consumers would think, is repetitive, and, even if it is admissible, is of negligible value.  There are some further points specifically in relation to Ms. Perez in that some of her evidence consists simply of commenting on documents. 
7	The matter came before me on 3rd July.  Mr. Geoffrey Hobbs QC and Mr. Hugo Cuddigan, instructed by Mishcon de Reya, appear for the defendants.  Mr. Martin Howe QC and Mr. Andrew Norris, instructed by Reed Smith, appear for the claimants. 
8	Mr. Hobbs' submissions essentially are these.  First, he says this is the correct time to take this objection, i.e. in advance of trial.  He refers to the Chancery Guide of January 2013, para.4. I will say now that I accept that submission.  The clear purpose of the Guide and the paragraph I have referred to is to aim to have disputes like this resolved in advance of trial so that whatever needs to be done about it before trial can be done. 
9	Second, Mr. Hobbs submits the evidence is expert evidence.  This involves looking into the cases on the issue, which I will return to, and looking at the statements themselves.  Third, submits Mr. Hobbs, if it is expert evidence, then it is inadmissible without permission.  That is CPR Rule 35.4(1).  Moreover, if it is expert evidence, then, even if it is permitted, the regime in Part 35 applies with various consequences relating to the duties of the witness and the protocol on instructions.  Mr. Hobbs also refers to the recent decision of the Court of Appeal in the Force India case.  That concerned a different kind of evidence from the evidence before me, but the point was made clearly there, particularly in the judgment of Stanley Burnton LJ, of the dangers of circumventing the requirements of CPR Part 35, albeit, as I say, in different circumstances.  Fourth, Mr. Hobbs submits that this evidence should be excluded on case management grounds on any view.  There are various problems: it is repetitive, much of it is based in the USA and of no real value.  He points to the recent guidance from the Court of Appeal in the Interflora cases about survey evidence in trademark cases.  As Mr. Hobbs puts it, the direction of travel and the emphasis is on a consideration of whether evidence to be called in trademark and passing off cases will be of REAL value.  He says this evidence is not useful and should be ruled out. 
10	Mr. Howe's submissions essentially are these.  First, he says that this evidence is not expert evidence at all, it is trade evidence commonly given in passing off and trademark cases.  The issues raised by Mr. Hobbs may go to its weight, but that is best dealt with at trial.  Second, the evidence complained of is of the very same character as evidence which the defendants themselves have called.  They call trade witnesses who describe the trade and express opinions about views of consumers in this business, and refer to their experience in that trade to bolster the value of their views.  Third, submits Mr. Howe, it is not fair to take these case management objections in this way at this stage.  In effect, this would be a retrospective case management conference conducted far too late for the parties to do anything about it.  Although under the new Rule 32.2 of the CPR that rule will give the court power to restrict evidence generally, that does not apply in this case and it is not fair to impose an equivalent in this way. 
11	Finally I should say that Mr. Hobbs accepted that his client’s evidence did contain material which, if his submission was correct, would be expert evidence and only admissible with leave.  Mr. Hobbs also submitted that if the evidence was expert evidence, then it is not a matter of discretion, the evidence in inadmissible, without permission, and so the matter needs to be ruled upon. 
12	After I heard the parties, I expressed the following concern.  On Mr. Hobbs' case, both sides have submitted inadmissible expert evidence.  If that is what has happened, then the consequences need to be applied fairly.  Therefore, in order to deal with the issues on this application, I need to rule on that issue first and give the parties time to think about the implications of it for this case.  The other case management issues can wait a few days, albeit that the trial is coming up soon.  This judgment is my ruling on that question. 
Is trade evidence in trademark cases expert evidence within CPR Part 35? 
13	I have not found this an easy question to address and, given the potential ramifications for the conduct of trademark and passing off cases, I will try and address all the material which has been cited to me. 
14	Section 2(3) of the 1972 Civil Evidence Act, provides that rules of court can be made to regulate the admission of expert evidence, but it does not define what expert evidence is.  The modern regulation of expert evidence is set out in CPR Part 35.4(1) and (2): 
"(1) No party may call an expert or put in evidence an expert's report without the court's permission. 
(2) When parties apply for permission they must provide an estimate of the costs of the proposed expert evidence and identify -
(a) the field in which expert evidence is required and the issues which the expert evidence will address; and 
(b) where practicable, the name of the proposed expert."  
15	At one stage Mr. Hobbs submitted that this was a novelty in the CPR. That is not right.  Previously, Rules of the Supreme Court O.38, r.35 was to the same effect as CPR 35.4(1), i.e. expert evidence was not allowed to be admitted without leave. That was in force since at least the 1980s.  It is true, however, that the regime governing expert evidence today is much more developed now under the CPR than it was before. 
16	In O2 v. Hutchison [2006] EWHC 601 (Ch) Lewison J (as he then was) was asked to consider evidence about a survey by an employee of a market research company, and rule whether it was expert evidence. He said as follows: 
"9.  The identification of what is or is not expert evidence is difficult to formulate.  I think that in most cases one knows expert evidence when one sees it but to try and formulate an overall test would I think be an impossibility. 
10.  I have been referred to the decision of Hobhouse J. in The Torenia [1983] 2 Lloyds Rep. 210, in which he gave a ruling on the question of admissibility of certain evidence at 232 and following.  Hobhouse J. analysed the evidence in this way at 233: 
'First, evidence is adduced which can be described as direct factual evidence which bears directly on the facts of the case.  Second, there is opinion evidence which is given with regard to those facts as they have been proved; and then, thirdly, there is evidence which might be described as factual, which is used to support or contradict the opinion evidence.  This is evidence which is commonly given by experts because in giving their expert evidence they rely upon their expertise and their experience, and they do refer to that experience in their evidence.  So an expert may say what he has observed in other cases and what they have taught him for the evaluation of the facts of a particular case.  So also experts give evidence about experiments which they have carried out in the past or which they have carried out for the purposes of their evidence in the particular case in question'. 
11. The two submissions which Hobhouse J. had to consider were, on the one hand, that any factual evidence given by somebody who happens to be an expert is to be treated as evidence of fact; and, on the other hand, that if factual evidence is relevant only to the expert opinion of the experts, then it must be treated as expert evidence and expert evidence alone.  Hobhouse J. preferred the latter of these two submissions."  
17	There are three things to note from the passage to which I have just referred. First, it is impossible to formulate an overall test.  Second, in addition to opinion evidence, factual evidence given by an expert can also be expert evidence.  Third, I note the reference to the reliance on the expertise of the person giving the evidence. 
18	Another general point which I should make is this.  The law used to be that experts could not opine on the ultimate question before the court, and that can be seen reflected in some of the older cases in this area.  That is no longer the law, and so one needs to take care with the older cases to check that that is not the root of the objection they are dealing with. 
The evidence in trademark and passing off cases 
19	It is clear that in trademark and passing off cases for many years, trade witnesses have been called as witnesses, and in doing that have not been subject to an expert witness regime.  I will start by reference to the passage from Lord Evershed in George Ballantine & Sons v. Ballantyne Stewart & Co. [1959] RPC 273.  In that case he described a common kind of trade evidence.  He said this: 
"It is no doubt true... that the question of whether a mark is likely to cause confusion or lead to deception is the question for the court's decision and, accordingly, it is not legitimate for a witness to state or suggest by way of evidence expressed in general terms the answer which it is the court's duty to give.  But it is, in my opinion, going too far to say that a witness expert in the trade which is involved in the proceedings before the court, may not legitimately say in giving his evidence that, according to his experience of how the business in which he is and has been concerned is conducted, traders or customers will adopt certain characteristics or practices, though the weight to be attached to such evidence will always be a matter for the court."  
20	I note that the first part of Lord Evershed's statement is a reflection of the principle I have just referred to which used to apply, that experts could not give an opinion about the ultimate question of the court, which is no longer the law.  I should say that whether such opinions today are useful in a given case is a different question. 
21	An issue which commonly arises in this debate is about what exactly such trade witnesses may say. That has always attracted a degree of controversy.  It is a common phenomenon to find trade witnesses who describe the circumstances of the trade but then go on and express opinions about how customers will react. In Sodastream v Thorn Cascade [1982] RPC 459, Kerr LJ dealt with this and said the following at p.468, line 32: 
"The learned judge criticised all this evidence very severely on a number of grounds, although it was virtually uncontradicted.  First, he regarded much of the evidence as inadmissible, because the deponents, and the persons who were questioned by the deponents, expressed opinions as to what would be thought or done by other members of the staff, and to some extent by customers. When I first read these criticisms in the judgment, I was very surprised.  It seemed to me, and still seems to me that it is perfectly proper and admissible for someone in the trade to express opinions about the likely reaction of others in relation to matters which are within his or her sphere of work; indeed it is part of their responsibility to form a view on such matters. In particular it seems to me this kind of evidence must be admissible in affidavits in interlocutory proceedings although at trial the witnesses will of course be cross-examined about the opinions expressed by them." 
22	Now, Mr. Hobbs pointed out that this was a case about an interlocutory injunction and also that what Kerr LJ said appears not to have been the subject of argument before the court.  Mr. Hobbs submitted that what Kerr LJ had said was not of high weight in terms of legal precedent.  That may be, but this statement of Kerr LJ has been followed and applied since.  In the Gucci case in 1990 (Guccio Gucci v Paolo Gucci [1991] FSR 89), the Vice-Chancellor, Sir Nicholas Browne-Wilkinson, considered it.  There he reconciled a number of conflicting authorities on this point, which pointed the other way, as follows, at p.91: 
"Mr. Beloff submits, in reliance on a substantial body of authority, that I am not entitled to have regard to the evidence given by the trade witnesses.  He refers to a number of cases: North Cheshire & Manchester Brewery Company v. Manchester Brewery [1889] AC 83; George Ballantine & Sons v. Ballantyne Stewart & Co. [1959] RPC 273; Island Trading & Ors. v. Anchor Brewing [1989] RPC 287, as cases in which it was said that the court must not rely on evidence from witnesses as to whether or not others apart from that witness would be confused.  On the other hand, Kerr LJ in Sodastream v. Thorn Cascade [1982] RPC 459, at 468 could see no reason why regard should not be had to that evidence.
In my judgment, the distinction is this.  If you ask an ordinary witness with no trade expertise what he thinks other people will do, he has no specific knowledge greater than anyone else as to what other people's reaction will be.  Those cases which are relied on by Mr. Beloff are all cases where it either is not clear who the witnesses were or it is clear that they were not expert witnesses in any ordinary sense.  If, on the other hand, you are in an area which requires specialist knowledge, it is the function of the expert to instruct and inform the court as to those things which the court would otherwise not know, and in the process of so doing the expert is frequently asked the very question which the court has to answer.  In my judgment, where you have a specific area of the market of which the judge is ignorant, such as I am in this case of the designer label market, it is legitimate to produce evidence from those who are skilled in that market and know of it, and the likelihood of confusion amongst customers in that same market. For those reasons, I think I am entitled to look at the evidence for myself.  I do not regard it in any sense as decisive.  I would have reached that conclusion without it."  
I note there that the Vice-Chancellor is referring to the trade evidence before him as expert evidence. 
23	The words of Kerr LJ in Sodastream were also mentioned by the Court of Appeal in the Taittinger case in 1993 (Taittinger v Allbev [1993] FSR 641). There, Peter Gibson LJ did not have to rule on it but he remarked on what he called the good sense of what Kerr LJ and the Vice-Chancellor in Gucci had said.  I also note that Sodastream was applied by Ferris J at the trial of the NAD case in 1997 (NAD Electronics v NAD Computer Systems [1997] FSR 380).  
24	In 1998 the issue came before the Court of Appeal in The European v. The Economist [1998] FSR 283.  Millett LJ said the following: 
"The evidence of confusion or no confusion consisted of (i) evidence of witnesses purporting to testify to actual confusion; (ii) evidence of witnesses who had responded to a survey carried out on behalf of the plaintiff; and (iii) evidence of trade witnesses who gave their opinion of the likelihood of confusion.  I agree with the judge that the last category of evidence was almost entirely inadmissible on the present case.  The function of an expert witness is to instruct the judge of those matters which he would not otherwise know but which it is material for him to know in order to give an informed decision on the question which he is called on to determine.  It is legitimate to call evidence from persons skilled in a particular market to explain any special features of that market of which the judge may otherwise be ignorant and which may be relevant to the likelihood of confusion.  It is not legitimate to call such witnesses merely in order to give their opinions whether the two signs are confusingly similar.  They are experts in the market, not on confusing similarity. 
In the present case the only witness who in my opinion gave relevant evidence was Mr. Shield who testified. 
'In my experience, the general public are used to distinguishing titles of publications without difficulty given the fact that most titles are descriptive of [their] contents and therefore there are many publications on a particular subject matter with similar names.' 
That evidence was probably unnecessary in that the judge could have taken judicial notice of the facts to which the witness deposed, but it was at least relevant evidence of the nature of the market-place in which the parties were operating and of the degree of similarity which is tolerable in that marketplace without causing confusion."  
Mr. Hobbs submitted that this is a ruling that trade evidence is expert evidence within the rules of court.
25	Next Mr. Hobbs relies on the esure case, which is esure Insurance v. Direct Line Insurance [2008] EWCA (Civ) 842.  In that judgment, Arden LJ, at paras. 62 and 63, recognised the role for an expert where the market is one which is unfamiliar to judges, referring back to Taittinger and also echoing what Millett LJ had said in The European.  She suggested that surveys may be the best way of addressing customer perception but recognised the potential cost and the need for early case management in relation to surveys.  Jacob LJ in that case deals with the issues at paras.72 to 76. He explains that the problem was caused by a so-called "branding expert", Mr. Blackett.  He was not an expert in the actual field in question, and his evidence consisted of a series of argumentative assertions.  Jacob LJ regarded it as empty rhetoric of no value. Maurice Kay LJ agreed with the other judgments and added something about Mr. Blackett.  He thought, like Jacob LJ, that Mr. Blackett's evidence was not expert evidence at all.  On the definition of expert evidence, he referred to the judgment of Evans-Lombe J in the Barings case as follows, at p.942: 
"... expert evidence is admissible under section 3 of the Civil Evidence Act 1972 in any case where the Court accepts that there exists a recognised expertise governed by recognised standards and rules of conduct capable of influencing the Court's decision on any of the issues which it has to decide and the witness to be called satisfies the Court that he has a sufficient familiarity with and knowledge of the expertise in question to render his opinion potentially of value in resolving any of those issues.  Evidence meeting this test can still be excluded by the Court if the Court takes the view that calling it will not be helpful to the Court in resolving any issue in the case justly.  Such evidence will not be helpful where the issue to be decided is one of law or is otherwise one on which the Court is able to come to a fully informed decision without hearing such evidence."  
Maurice Kay LJ continued and referred to the words of Stuart Smith LJ in the Court of Appeal about expert witnesses in road traffic cases, noting that that expert evidence contributed nothing to those cases save expense. 
26	Next Mr. Hobbs relies on Floyd J (as he then was) in the Hasbro case at para.37 (Hasbro v 123 Nahrmittel [2011] EWHC 199(Ch)).  However, the passage at para.37 in Hasbro is not the only relevant passage, and I think Floyd J's judgment bears closer consideration. 
27	In Hasbro both sides called expert evidence.  Floyd J cited both The European and esure and also GE, and then said this at para.37: 
"Mr. Hobbs QC, who appeared on behalf of Hasbro with Mr. Douglas Campbell, submitted that these authorities do not go as far as to say that expert evidence is not admissible on the subject of whether the use of a sign takes unfair advantage of or is detrimental to the distinctive character or repute of a trademark.  That is true.  But insofar as those issues demand a consideration of what a customer will think when he or she sees a particular word or sign, it seems to me that similar considerations apply." 
Then at para.38, having set out an extract from the conclusion of Mr. Grant, who was one of the experts in question, Floyd J said this:
"38. These are all points on which a judge is able to form his or her own view, both as to whether they are established and whether they have relevance.  For these reasons I did not think that this was a case in which either side needed to call any expert evidence."  
28	But the experts were not the only witnesses called in Hasbro.  The claimant also called trade witnesses.  Floyd dealt with those at paras.22 to 29.  There is no need to set them out.  It is quite clear that the learned judge did not regard that trade evidence as "expert evidence".  These witnesses gave evidence about what happened in the trade and expressed opinions about customers' behaviour.  In fact Floyd J did not find the evidence of much use, but it is notable that it was not regarded as expert evidence as such. 
29	Finally, I need to refer to Arnold J in Samuel Smith v. Lee [2011] EWHC 1879 (Ch). That evidence included witnesses from the claimant itself describing the claimant's business and its use of trademarks, as well as third parties' use of other trademarks. This is, in effect, evidence from trade witnesses, although it was not necessarily expressing opinions about what customers would do.  The claimant also called an expert witness.  It was Mr. Blackett again.  The defendants submitted it was inadmissible following esure.  The claimant replied, arguing that although in esure Mr. Blackett had no expertise in the insurance industry and was just a "branding expert", in relation to the Samuel Smith case Mr. Blackett had actual experience in the brewing industry. Arnold J did not accept that that distinction helped, and at p.276 he said the following:
"The Court of Appeal's criticisms of Mr. Blackett's evidence in that case did not rest upon his lack of expertise with regard to the insurance industry, but upon more fundamental objections to the nature of the evidence. In my judgment those criticisms are equally applicable to his evidence in the present case.  In my view, Mr. Blackett's evidence concerning the distinctive character of the Trade Mark has some limited weight, but his evidence with regard to the likelihood of confusion, unfair advantage and detriment to the Trade Mark has no weight at all."  
30	Pulling all this together, I can state the following. 
31	First, the category identified by Maurice Kay LJ is not the only kind of expert witness evidence covered by CPR Part 35.  For example, in patent cases expert evidence is routinely called from persons who are not professional experts and do not necessarily belong to bodies with recognised standards and rules of conduct. 
32	Second, independence is not what takes such evidence into the relevant category. There are numerous examples of evidence from experts who are not in fact independent at all.  That may be fine, as long as the nature of any link with either side is identified and taken into account. 
33	Third, it seems to me that the nature of the proceedings and the role the evidence is to play in those proceedings is an important element in characterising the evidence in question. 
34	Fourth, sometimes parties do call an expert report identified as such in trademark and passing off cases. An example was the report of Mr. Blackett in the two cases I have referred to already.  It is important to note that there was no issue in esure or Samuel Smith that Mr. Blackett's evidence was expert evidence.  As I say, it was identified as such.  So the difficulty before me did not arise in those cases. I should say that in this judgment I am not expressing a word of disagreement with the decisions I have referred to above, which emphasises the lack of utility of anyone trade witness or a self-identified expert in “branding” -giving an opinion on the likelihood of confusion in a case about a market that the court is likely to be familiar with. 
35	Fifth, for years trademark and passing off cases have routinely included evidence from persons in the relevant trade describing the circumstances of the trade, the nature of customers and so on.  Such evidence will always have explained the experience of the witness in order to justify their evidence and add credibility to it. That evidence will always consist of factual statements about the trade.  Although it is primarily factual, it will sometimes include statements which are, properly analysed, expressions of opinion.  These are not necessarily opinions simply on the likelihood of confusion but are expressions of opinion about how customers behave. However, it is clear, and I refer, for example, to Hasbro, that such evidence has not always been treated as expert evidence as such and has not hitherto been regarded necessarily as subject to the regime in CPR Rule 35. Hasbro is also an example showing that as long as it is kept in its proper place, not characterising it as expert evidence within CPR Part 35 does not matter. 
36	Moreover, to impose the further burden of the duties and responsibilities of expert witnesses on such witnesses is capable of having a chilling effect in trademark and passing off cases.  The sort of trade evidence I am talking about is not given by persons who identify themselves as "expert witnesses", and they are different from the self-identified experts such as the individual referred to in esure and Samuel Smith. Mr. Hobbs referred to the recent Interflora cases in the Court of Appeal. Their aim is to seek to ensure that costly survey evidence of little probative value is eliminated from trademark and passing off cases.  Of course one of the alternative sources of relevant evidence in trademark and passing off cases is cogent evidence from persons in the trade describing the circumstances of that trade to the court. When properly done, that evidence is much less costly overall than a badly-conducted survey. 
37	There are two different issues in play in this debate.  One is the court's ability to regulate the evidence and second is the imposition of the requirements relevant to expert evidence such as the obligations, and so on, referred to in Part 35.  It is the impact of that latter issue in trademark and passing off cases which concerns me much more than the former.  In fact the problem may have been potentially more significant in the past than it is today because of amendments to the CPR following the Jackson Review.  They emphasise that all the evidence before the courts is now to be controlled, and I refer to the new Rule 32.2. Thus, we are moving towards a regime more like the Patents County Court system. The significance of that is that the ability to restrict evidence does not now depend on whether it is characterised as expert evidence or not.  It is now clear that evidence can be controlled, however it is characterised. 
38	In future it is clear that trade evidence will be subject to the regulation under Rule 32.2.  In the Patents County Court system for the last three years, what has happened is this.  At the case management conference the court would ask the litigants what sort of evidence they intended to call.  The litigants know that they need to be able to give a rational answer to that question.  In a trademark and passing off case, one obvious potential category is trade witnesses.  As a judge in the PCC, if a party wanted trade evidence I would generally permit a limited number of trade witnesses. It would all depend on the circumstances, and there is no reason why the same approach cannot be taken in general terms at the CMC under Rule 32.2.  Indeed, it seems to me that in order to exercise the power in Rule 32.2, a party will need to be able to say at the case management conference what sort of evidence they intend to call.  In a High Court case, a limit on the numbers or the type of evidence may or may not be appropriate, but at least if the question is asked at the case management conference, steps can be taken.
39	In conclusion on the principles, just as Lewison J (as he then was) in O2 found, it seems to me that to provide a definition of expert evidence is impossible.  Plainly trade evidence can be presented as an expert's report, such as the branding expert evidence of Mr. Blackett.  The cases show that that evidence can have little value. But, in my judgment, in a trademark and passing off case, evidence of the factual circumstances of a trade by a person in that trade, even when they deploy their experience in that trade to bolster what they are saying, is not necessarily "expert evidence" within CPR Part 35. Apart from anything else, there is no reason to treat it as such.  However, the fact that evidence is not labelled as an expert's report does not mean it is not in truth expert evidence.  The evidence which was the subject of the criticisms in esure was obviously expert evidence, whether it had been labelled as such or not.  A witness who expresses an opinion on the ultimate question before the court -for example, will the relevant public think due to the presence of the photograph of Rihanna on a T-shirt that the Rihanna T-shirt is in fact licensed by or authorised by Rihanna? -is expressing an expert opinion.  A witness called to say that would need to comply with CPR Part 35. 
40	To decide whether the trade evidence called by both sides in this case is in fact expert evidence cannot be done without a closer examination of those statements.  I will apply what I have said to this case.  I start with the following: 
a) although T-shirts are ordinary consumer goods, this case is very much concerned with a particular segment of the market, i.e. T-shirts aimed at young teenage girls. It is not a market the court is likely to be so familiar with that proper trade evidence will be pointless.  Speaking for myself, I would be assisted by proper evidence focusing on the nature and circumstances of that market. 
b) although most trademark cases and passing off cases involve the question of "What do relevant customers think when they see the sign complained of?", this is not a case in which the primary issue is whether the sign is or is not too similar to another sign.  The issue in this case is a more subtle one.  The sign is Rihanna. The question is: what do customers think about it? 
c) all the witnesses that I have referred to emphasise and explain their experience in the trade.  Each of them is seeking to rely on that experience to justify their evidence. 
41	First, Mr. Coyle.  He gives evidence about licensing in the clothing trade worldwide and in the United Kingdom. He addresses the impact of unauthorised goods in the market.  His evidence is not focused on the specifics of the T-shirt in question but on the general nature of the trade. 
42	Second, Mr. Daffner, he is similar to Mr. Coyle and potentially duplicative.  He deals with fashion and celebrity licensing in the same area.  He states: 
"I know from direct experience that fans believe there is a direct connection between the celebrity and the merchandise which bears their name, image or artwork."  
Again, he is addressing the trade in general and not this T-shirt. 
43	Third, Mr. Dapron.  He is similar to the previous two but is focused on music and merchandising in that trade. He says: 
"Fans want and expect T-shirts with an image of the artist to be authorised."  
Again, he is addressing the trade in general. 
44	Pausing there, in my judgment, these three witness statements are not expert evidence within CPR Part 35.  They are rather duplicative, and Mr. Daffner and Mr. Dapron are very US-centric and I query their relevance, but those are case management questions. 
45	Next, Mr. Robinson.  He is a music industry consultant.  His job has been to study fans.  He says that fans expect High Street retailers with the stature of Topshop to sell official merchandise.  He also refers to research he has done but cannot now find, and cross-refers to a colleague who is also involved in research, and says his colleague shares the same view.  In my judgment, this is expert evidence and is subject to CPR Part 35.  The determinants in the case of Mr. Robinson are the reference to and reliance on research, and also the nature of his role as a researcher generally.  As he puts it, his job has been to study fans.  I might also add that, having read the statement, I am not impressed with the utility and probative value of the references to unidentified research and to the views of Mr. Robinson's friend in any event.  If the claimants wish to rely on Mr. Robinson, they will need leave, and CPR 35 will need to be complied with. 
46	Next Mr. Joseph.  He is also in the music merchandising business.  He discusses the control of the image of artists.  His company took a licence from the claimant to promote her current worldwide tour.  He explains in general terms the value of that licence and discusses the impact of unauthorised goods.  I think this is relevant evidence.  I do not think it is expert evidence within Part 35 at all.  It is basically factual trade evidence. 
47	Next the segments from Ms. Perez's statement.  Ms. Perez is the main witness for the claimants.  Most of it is not objected to.  Some of Ms. Perez's evidence which is objected to is duplicative of what I have dealt with already.  It relates to the licensing business in the music and fashion area.  The high point of Ms. Perez's evidence on the question of whether it is expert evidence is paras.81 to 83.  Here effectively Ms. Perez articulates the claimant's case why the T-shirt in this case is said to create a misrepresentation that it is authorised and why the claimant is concerned about it.  I think this is natural evidence for the claimant to give.  It is not expert evidence.  It is difficult to see how this case could be articulated otherwise. 
48	A different problem with relation to Ms. Perez's evidence is the way in which she comments on documents, which I must say seems rather pointless, and I query whether it is useful on case management grounds. 
49	I will now turn to consider the defendants' evidence.  First, Sheena Sauvaire.  She is the head of marketing at Topshop.  She explains her experience in the trade and describes the licensing at Topshop.  She says at para.44: 
"It is my experience that consumers expect a more overt level of marketing communication before they will assume a connection between a celebrity and a brand."  
In saying that, she is referring to what she says is the marketing communication given by the T-shirt in question in this case.  I think this is natural evidence for someone in her position to give in a trademark case.  The court, as I say, is not necessarily familiar with the shopping habits of teenage girls. The defendants did not seek permission under Rule 35.  I think they were right not to do so.  To say that this sentence turns the entire evidence given by Ms. Sauvaire, which runs to some 46 paragraphs, into expert evidence seems to me to be wrong, and to impose the expert evidence regime as a result would be a sledgehammer to crack a nut.  In my judgment, it is outside CPR 35. 
50	Finally, I need to deal with Mr. Chatalos' evidence. He is the source of the T-shirt in this case.  He describes his business and the application of images to T-shirts.  In my judgment, this is useful evidence too, just like the trade evidence from the claimants. It is not expert evidence either, and I will admit it. 
51	In conclusion, I find that Mr. Robinson's evidence is expert evidence; it requires permission under Rule 35.  Otherwise I reject the defendants' arguments that the rest of this evidence is formally inadmissible as a matter of principle under Rule 35. There are some serious case management questions which bear consideration and there will be a further hearing next week to address the consequences.  In particular, the claimants need to consider the duplicative nature of some of their evidence, and Ms. Perez's approach to the documents.  That is my judgment. 
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