In REEF Trade Mark  RPC 5, Robert Walker LJ asked the rhetorical question:
“How reluctant should an appellate court be to interfere with the trial judge’s evaluation of, and conclusion on, the primary facts?”
He answered it thus:
“an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle”.
Whenever a court departs from a rule there will always be someone who wants to test the boundaries of the exception. And so it was in ELLE TM.
A South African knitwear manufacturer applied to register ELLE as a trade mark for knitting wool and yarn in class 23. Its application was opposed under s.5 (2) and s.5 (3) of the Trade Marks Act 1994 by the publisher of the women’s magazine of that same name. The hearing officer threw out the opposition (see ELLE TM). The publisher appealed to the High Court on the ground that “the hearing officer erred in principle”. There was no suggestion of any procedural error or other irregularity. The complaint was simply that the hearing officer had been wrong.
The appeal was heard by the Chancellor of the High Court (as we must now call Sir Andrew Morritt (fornmerly our V-C in the North) who examined in minute detail the decision in the Registry and the tribunal’s reasoning. He could no fault in it and dismissed the appeal. However that was not quite the end of the matter. The court had been presented with 10 ring binders of evidence amounting to several thousand pages of evidence of which he read 5. Observing that PD 52 para 5.6 (1) (I) and (2), requires appeal bundles to include only documents which “the appellant reasonably considers necessary to enable the appeal court to reach its decision” or are “directly relevant to the subject matter of the appeal”, he disallowed the costs of copying 9 out of 10 of those binders. The appellant’s solicitor had tried to argue that the cost of culling the bundle would be less than those of copying it but the judge would have none of that:
“The fact remains that the solicitors for HFP did not do what the Practice Direction requires. …… they seem to have chosen to ignore the Practice Direction because it would cost more money to comply with it. I do not accept that as sufficient justification. “
Subject to evidence to the contrary, both sides were at fault. He disallowed the successful respondent’s claim for costs against the other side and disallowed the appellant’s solicitors’ costs from their own client. That decision was a bit hard on the poor old sollies. The copying charge came to £2,300 – though I guess they can afford it ;-/. But something had to be done, don’t you think. Nearly 8 years after the CPR was supposed to change the litigation landscape for ever, the view looks awfully like the view Pre-Woolf. It is a salutary warning to litigators. Until the next time.