"(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."
"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."
"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."
"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."
"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."
"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."
"... expert evidence is admissible undersection 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."
"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." "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."
"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."
"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."
"Fans want and expect T-shirts with an image of the artist to be authorised."
"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."