In most litigation, evidence is everything. This is certainly true of passing off actions where, to succeed, the claimant must prove the classic trinity, namely a reputation and goodwill, a misrepresentation and consequential damage.
This article is concerned with the second of those elements, the misrepresentation, and one of the methods of obtaining the evidence necessary to establish it, namely test purchases or trap orders.
In the classic form of passing off action the misrepresentation will ordinarily be that the defendant’s goods or services are, or are in some way associated with, the claimant’s goods or services. However, in all forms of the action the claimant’s task is to prove that the relevant public has been, or is likely to be, deceived as to one or more of the source, quality or nature of the defendant’s goods.
The best possible evidence is direct evidence from consumers who have been deceived.1 This evidence is commonly very difficult to come by. Some purchasers may be deceived but never realise their mistake, while many will not bother to complain even if they do appreciate what has happened.2 Those who do complain are more likely to complain to the person from whom they purchased the product than to the claimant. The evidence does not come readily to the claimant’s attention.
Exceptions tend to include those cases where the claimant has more than one quality of product and the complaint is that the defendant is passing off a lower quality of the claimant’s product as a higher quality. Where the goods in question are personal hygiene products, consumers are likely to notice the difference in quality very quickly and are likely to be motivated to complain to the claimant. Examples include Wilkinson Sword Ltd v Cripps & Lee Ltd  (imported razor blades of an inferior quality) and Colgate-Palmolive v Markwell Finance  (imported toothpaste of an inferior quality). In both Wilkinson and Colgate the direct evidence of consumers came from people who had complained to the brand owner, believing that there had been a sub-standard batch. In each case the complainants numbered several hundred.
Such cases are rarities and the evidence usually has to be sought out. The most commonly used methods are trap orders and surveys. In the case of trap orders the objective is to see whether or not traders supply the defendant’s product in response to orders for the claimant’s product and in the case of surveys the objective is to see if interviewees responding to the survey demonstrate that they have been confused or deceived by the defendant’s product. Both of these methods are open to abuse and they have to be deployed with great care if the court is going to attach any weight to the resultant evidence. This article is concerned with the trap order.
In its simplest form an order is placed for the claimant’s product with the defendant (or a seller of the defendant’s product) and there is then a wait to see what is supplied in response to the order.3 The order must be free of ambiguity and must be placed in a form that is appropriate for the circumstances of the trade in question. There must be no suggestion of any attempt to direct the subject of the trap order to the defendant’s product. In an ideal world the incident should be fixed in the mind of the person trapped so that when the evidence comes to be evaluated at trial they cannot claim to have forgotten the occasion. Finally, if the person trapped is not the defendant, the defendant should be notified as soon as possible to enable them to investigate the matter.
If the order and the resultant supply are both recorded in writing, there should be little room for doubt as to what has transpired. For that reason, where written orders are appropriate, that form is always to be preferred.4 However, orders in shops are usually made orally and there will inevitably be scope for doubt as to what has occurred. Was the order placed clearly? Was it properly understood by the recipient of the order? One way of resolving some of those doubts is to obtain a written receipt for the purchase.5
In Fox’s Glacier Mints Ltd v Joblings  the claimant was seeking to establish that the defendant, a Leicester retailer, was selling competing mints in response to orders for Glacier Mints, the claimant’s brand. Three people from the claimant’s solicitors were sent round to the defendant’s retail shops. They asked the shop assistants for Glacier Mints and were supplied with the competing product. The judge was not satisfied that this was evidence of passing off. The evidence was that the shops were noisy. Moreover, in Leicester the competing mints were known generically as ‘glassy mints’ and the ‘a’ in glassy was pronounced the same way as the ‘a’ in glacier, with the result that there was a strong chance that the request for Glacier Mints had been misheard. In such circumstances, it might well have been preferable for those placing the order to have handed over to the sales assistant a piece of paper with ‘Glacier Mints’ written on it as part of a larger shopping list, saying something along the lines of ‘our boss has asked us to get these’.
As a general rule, where the exercise involves oral orders for a product, it makes sense to ensure that those going out to place the orders conduct the exercise in pairs. This enables corroboration and also facilitates a full, accurate note of what has transpired.6 It is easy for the person placing the order to forget or omit the detail of the conversation, particularly if it is a long one. Additionally, as in Diageo North America, Inc & anor v Intercontinental Brands (ICB) Ltd & ors  (or Vodkat), it is frequently necessary for photographs of the shop display to be taken and for prices to be noted down, so having two people rather than one is a distinct advantage.
It is crucial that those entrusted with conducting trap orders are diligent, trustworthy and therefore likely to be believed. To do otherwise is to invite disaster. See F.W. Hampshire and Co (1927) Ltd v General Kaputine Syndicate Ltd .
Having set the trap and achieved a satisfactory response, what happens next? In an ideal world the person trapped will be informed immediately and it will be discussed with them how it was that they came to supply the defendant’s product in response to a request for the claimant’s product.7 If the person concerned is a junior employee, the manager will be asked to discuss the matter with them thereby learning what it was that led to the error. Finally, a letter confirming the sequence of events will promptly be sent to the person concerned and if that person is not the defendant, another letter will be sent to the defendant. This course of action has the advantages of:
- fixing the event in the mind of the person trapped and their superior; and
- giving the defendant an opportunity to check the quality of the evidence.
If this sequence is not followed, there is the serious risk that the event will be forgotten and/or denied.8
Another thing to remember is that for a court to place weight on evidence of deception or confusion, it must be satisfied that it is not an isolated one-off or in some way unrepresentative of the picture it purports to portray. In Leahy, Kelly & Leahy v Glover , Lord Herschel (the Lord Chancellor) said:
‘In the present case the transaction complained of is an isolated transaction, which is attributed to a shop woman in the employment of the defendant, in a single act of sale, led on by the mode in which she was addressed by the witnesses. She has ceased to be in the defendant’s employment and under those circumstances it seems to me that it would be, I was going to say monstrous, to enjoin the defendant from doing acts which there is not the slightest ground for supposing he is ever likely to do.’9
The court is unlikely to take much interest in such evidence if the mistake identified by the trap order ‘was accidental or inadvertent on the part of a careless shop man’.10 This is equally true if:
‘The plan of campaign was… [to] go to a place, give an order to a boy in a casual offhand sort of way and then rest on the result of that order.’11
However, where the instance is not an isolated one and the evidence is persuasive, the fact that the persons trapped were ‘of extremely low intelligence’ will not assist a defendant who is ‘responsible for the choice of the agents whom he employs to dispense the drinks in his public house’.12
It has been said that:
‘The burden which rests upon the plaintiff, heavy as it is in any case of passing off, is heavier still when the only evidence of passing off is furnished by the consequence of trap orders’ [emphasis added].13
Accordingly, in an ideal world, when planning trap orders, particularly in cases where the trap order evidence is substantially the totality of the evidence, it must be ensured that:
- The order to be placed is as clear and as simple as possible with no room for ambiguity.
- The order is framed in a manner appropriate to genuine transactions in the trade in question.
- When the order is placed, the person placing the order has the undivided attention of the person that has to be trapped.
- There is no attempt to induce the recipient of the order to fall into the trap, whether by a remark or a gesture.
- The order is placed with an appropriate individual (ie appropriate to the transaction in question).
- The person placing the order is accompanied by a colleague for purposes of corroboration.
- Immediately on the trap having been sprung:
a) the person trapped is informed of the trap;
b) a detailed verbatim note is made of the trap and the subsequent conversation; and
c) if the person trapped is a junior person, their manager is informed (and a detailed verbatim note taken of that conversation).
- Immediately thereafter, if the defendant was not a party to any of the conversations referred to in the previous paragraph, a letter is sent to the defendant informing them of what has transpired.
However, this is not an ideal world and circumstances are rarely straightforward. Problems tend to arise primarily in relation to immediate, on-the-spot notification (points seven and eight). If an extensive exercise is planned, which is likely to spread over a period of days or weeks, the last thing needed is to tip off the defendant after the first trap, thereby rendering the rest of the exercise a waste of time. Moreover, the first trap to be conducted may be a pilot effort to check that the exercise has been appropriately framed and is worthwhile continuing. Often, the staff sent out on these exercises may be relatively junior and not ideally placed to conduct conversations with the people they have trapped and their superiors. In such circumstances notification may be better left to a senior person after the event. Sometimes the circumstances are such that there may be a fear that in the heat of the moment the person trapped will react violently. Where the trap is placed in a crowded shop, there may justifiably be a reluctance to embarrass the shopkeeper in front of their customers.
If immediate notification cannot reasonably be made for any of the above reasons, what level of delay will be regarded as acceptable? This is likely to vary with the circumstances of the case. In Ripley v Griffiths , Farwell J expected the defendant retailer to be informed ‘then and there’, and commented:
‘To say that anybody can possibly recollect the sale of one halfpenny cake of blue weeks after, or even days after, seems to me to be almost preposterous.’
Whereas in Vodkat the judge found a two-to-nine-day delay in notification as acceptably prompt.15
Vodkat was an extended form of passing off. The claimants’ task was to establish that Vodkat, the defendants’ 22% alcohol by volume (ABV) mixture of vodka and fermented alcohol, was being passed off as vodka.16 While much of the evidence was the product of a trap purchase exercise in pubs and corner shops, that evidence did not do much more than was shown from a wealth of documentary evidence of deception, ranging from wholesalers’ catalogues to retailers’ window stickers, shelf tickets and till receipts, identifying the product as a vodka. The trap purchases merely demonstrated that when retailers purchased Vodkat from wholesalers identifying the product as a vodka, they believed it to be a vodka and sold it on in response to orders for vodka. The trap evidence was far from being the totality of the evidence of deception and those trapped were unlikely to contest the evidence.
Accordingly, while the eight best practice points are an ideal to aim for where possible, they are not set in stone and are not always necessary or appropriate. It will be noted that most of them stem from judicial comments made in cases where the trap evidence is the only sign of passing off relied on by the claimant (eg Cellular Clothing Company Ltd v G White & Co Ltd , Fox’s and Procea Products Ltd v Evans & Sons Ltd ).
Meticulous adherence to those best practice points will be required where the allegation against the defendant and/or the person trapped is one of fraudulent misrepresentation (eg H.P. Truefitt, Ltd and H.P. Truefitt v C.J. Edney ), where the burden of proof will be high. Moreover, common sense dictates that if the evidence obtained by way of the trap is likely to be counterintuitive to the judge, all ‘i’s will need to be dotted and all ‘t’s crossed to render the evidence as solid as possible.
At trial in Vodkat the claimants’ solicitors came under attack in cross-examination for not having prepared written instructions to those carrying out the trap purchases, for (in some cases) not having raised the matter with the retailers at time of purchase, and thereafter for not having written immediately to those trapped and to the defendants.
Those responsible for organising the exercise should prepare written instructions for those conducting it, however simple the exercise and however obvious the message to be communicated, if only to obviate scope for cross-examination.
If there is confidence in the strength of a case and it is strongly suspected that the last thing the defendant will want to do is to test the matter out for themselves, there is a simple ‘heffalump’ trap that can be laid that rarely fails. In Vodkat the claimants’ solicitors informed the defendants of a successful trap in a Liverpool pub and explained that no conversation had been conducted with the publican to enable the defendants to check the matter out for themselves. They did not do so and indeed, some eight months later, the pub had closed. In such circumstances, criticising the claimants’ evidence was always going to be very difficult.
A claimant should anticipate, however, that in most cases a defendant is likely to want to speak to the claimant’s witnesses themselves, to see whether the allegations made are justified or whether the evidence can be discredited. The stronger the evidence the claimant has gathered, the more likely it is that the case will settle, without the need for a trial.
This method of obtaining evidence is not pleasant. The person placing the order is falsely representing themselves to be a genuine purchaser in the hope that the recipient of the order will supply something other than what has been ordered. As Harman J stated in Cellular Clothing:
‘The object of the persons who asked for “Aertex” material was to obtain something which was not “Aertex” material, and it has been pointed out again and again that, that being so, although trap orders are a necessity, they are to some extent an odious necessity and they have to be looked at, therefore, with the greatest suspicion.’
It has even been questioned whether it is right for a solicitor (as opposed to their agent) to conduct trap purchases.17 However, the practice is now well established and given that the scope for error is great, it makes sense that such exercises are properly supervised by responsible people aware of what is required.
Accordingly, the eight best practice points identified in this article are an ideal structure for a claimant to aim for when gathering evidence of misrepresentation in a passing off action. However, it is important for a claimant to remember that the best practice points are not always necessary or appropriate. The points should be applied with common sense, depending on the circumstances of the case, in the full awareness that whatever is done is likely to be subject to intense scrutiny by both the defendant and the court.
This article could not have been written without the benefit of Tony Willoughby’s invaluable input. Tony and Lindsay represented the claimants in Vodkat.
- Other than ‘morons in a hurry’ per Foster J in Morning Star Cooperative Society v Express Newspapers Ltd  FSR 113 at p117 or ‘freaks’ per Jacob J in Neutrogena v Golden Ltd  RPC 473 at p484.
- ‘Who would bother to kick up a fuss over a 4d loaf?’ per Roxburgh J in Procea Products Ltd v Evans & Sons Ltd  RPC 210 at p219 or ‘The fact that some will not have bothered to complain is supported by evidence that consumers in the 18-21 age group tend not to complain about products’ per Arnold J in Diageo North America, Inc & anor v Intercontinental Brands (ICB) Ltd & ors  EWHC 17 (Ch) (or Vodkat) (paragraph 226) (infra).
- See Walt Disney & anor v Gurvitz  ChD 446.
- See Carr & Sons v Crisp & Co Ltd  19 RPC 497.
- See Ripley v Griffiths  RPC 590 at 597.
- In Procea Products the judge (at p217) placed no reliance on trap evidence unsupported by an accompanying witness.
- See Fox’s Glacier Mints Ltd v Joblings  RPC 352.
- See Fox’s.
- 9) Leahy, Kelly & Leahy v Glover  10 RPC 141 at p158. Lord Herschel also had several other criticisms relating to the manner and recordal of the trap order evidence.
- 10) Joyce J in Lever Bros Ltd v Masbro’ Equitable Pioneers Society Ltd  RPC 33 at p46.
- 11) C.C. Wakefield & Co Ltd v Board  RPC 261 at 267.
- Danckwerts J in Showerings Ltd v Fern Vale Brewery Company Ltd & ors  RPC 484 at 486 and 487.
- Roxburgh J in Procea Products Ltd v Evans & Sons Ltd  RPC 210 at p211.
- ‘Blue’ is the equivalent of what is now called washing powder.
- Vodkat, paragraph 190.
- The EU definition of vodka is to be found in Annex II category 15 of Council Regulation (EC) No 110/2008, one of the factors being that it must have an alcoholic strength of at least 37.5% alcohol by volume (ABV).
- See Marie Claire Album SA v Hartstone Hosiery Ltd  FSR 692 at 696.