His Lordship's Voice (No 1 of an occasional series)

'The explanation for my client's alleged participation in this conspiracy is summed up in the old Creole saying, "He who lies down wid de dogs, gets up wid de fleas".'

This was what Lord Justice Ward once heard John Roberts QC submit passionately to His Honour, the late Judge Norman Brodrick, as he recounts in his judgment in the recent case of Baldwin v Berryland Books [2010] EWCA Civ 1440, para 95.

The case concerns a claim for conspiracy to injure a business by unlawful means. It's not being reported by ICLR because the law applied is well settled in a number of cases already reported (see paras 45 to 49), but that decision is only taken after both the reporter and the relevant editor have carefully considered the case. One of the perks of this sometimes arduous task (we read and consider thousands of judgments a year) is to come across a hidden gem or amusing aside, such as that above.

It's not that surprising when you think about it. Judges are natural raconteurs, and if they don't use as much humour as they might do in their judgments, it is only for fear of upsetting the parties or being misunderstood (deliberately or otherwise) in the press.

I shall continue to celebrate flashes of forensic wit and judicial anecdote as and when I come across them, and welcome external contributions to, and comments upon, this occasional series.

Truth in the market place - the fragrance of fair competition

"Truth in the market place matters—even if it does not attract quite the strong emotions as the right of a journalist or politician to speak the truth."

So spoke Lord Justice Jacob, our leading IP (intellectual property) judge, in a recent case, bemoaning the fact that the Court of Appeal's hands were tied by virtue of the European Court of Justice's earlier ruling in the case, and were bound to hold that the use of a proprietor's trade mark to advertise an imitation product infringed the "identical mark/identical goods" protection accorded by European law. Yet all the imitation producers were doing was telling the truth: this product is just like that product. (Just as good, only cheaper.) The products were imitation perfumes, and L'Oréal and other high brand producers did not want their trade marks used, even indirectly, to advertise them. As Jacob LJ continued:

"The Court of Justice’s decision in this case means that poor consumers are the losers. Only the poor would dream of buying the defendants’ products. The real thing is beyond their wildest dreams. Yet they are denied their right to receive information which would give them a little bit of pleasure; the ability to buy a product for a euro or so which they know smells like a famous perfume.

"Moreover there is no harm to the trade mark owner—other than possibly a 'harm' which, to be fair, L’Oréal has never asserted. That 'harm' would be letting the truth out—that it is possible to produce cheap perfumes which smell somewhat like a famous original. I can understand that a purveyor of a product sold at a very high price as an exclusive luxury item would not like the public to know that it can be imitated, albeit not to the same quality, cheaply—there is a bit of a message that the price of the real thing may be excessive and that the 'luxury image' may be a bit of a delusion. But an uncomfortable (from the point of view of the trade mark owner) truth is still the truth: it surely needs a strong reason to suppress it.

"My second reason is more specific. It is about freedom to trade—indeed, potentially in other cases, to compete honestly. (This case is a fortiori for the parties’ respective products are not in competition with each other.) If a trader cannot (when it is truly the case) say 'my goods are the same as Brand X (a famous registered mark) but half the price', I think there is a real danger that important areas of trade will not be open to proper competition."

See L'Oréal SA v Bellure NV (No 2) [2010] Bus LR 1579, paras 9, 14--16, per Jacob LJ.

Sir Robin Jacob will be sorely missed when he retires from the Court of Appeal, where he is currently in charge of its Intellectual Property List, to take up his appointment as the first holder of the Sir Hugh Laddie Chair in Intellectual Property (IP) Law at UCL next year.

Read more of Sir Robin's trenchant comments in our full report of this case in the current issue of the Business Law Reports.