England and Wales High Court (Patents Court) Decisions

Emaco Limited, Aktiebolaget Electrolux v. Dyson Appliances Ltd [1999] EWHC Patents 260 (26th January, 1999)

In the matter of :-

6. Dyson retaliates by counterclaiming for injunctive relief and an inquiry as to damages on grounds of malicious falsehood in respect of a "flyer" published by Electrolux, comparing the DC01 unfavourably with the EPS. The allegations made by Dyson in relation to the flyer all of which allegations are denied by Electrolux) take the same general form, mutatis mutandis, as the allegations made by Electrolux in relation to the graph.

8. Since the publication of the material of which complaint is made, events have moved on. The DC01 has been substantially modified and improved, and it may be that the same applies to the EPS (Counsel was not clear whether or not this was in fact the case: see Mr Milmo QC's observation at Day11/1366.9-10.). At all events, in the context of the continuing marketing war being waged between Electrolux and Dyson the graph and the flyer are already for practical purposes obsolete, just as Mr Dyson's quoted comments are a matter of history. Thus, if and to the extent that either party is successful in its claims in this action, in considering what (if any) remedy to grant the Court will be concerned not so much with the regulation of future conduct by means of injunctive relief as with assessing the extent which the successful party (or parties) was (or were) damaged by a specific incident or incidents in the course of a marketing war in which each party wielded the weapon of comparative advertising in an attempt to establish the supremacy of its own product over the product of the other. To put it shortly, this action is concerned essentially with the past - and with the settling of old scores - rather than with the future.

20. The exhaust filter on the EPS requires to be cleaned regularly, and eventually replaced. The Instruction Manual for the EPS (L2/344.) recommends that the exhaust filter be cleaned once a month to maintain good performance, and that the cassette be emptied after each use (See ibid. p.348). It goes on to assert: "It is clearly visible when the dust compartment is full and needs emptying" (See ibid.).

28. In April 1997 a trade magazine called "The Independent Electrical Retailer" published a supplement on floorcare which contained an article (L2/474) by one of its reporters, Susan Dean, entitled: "Getting down to ground level". In the course of the article, the following passage appears (L2/479):

30. In July 1997 Electrolux issued a "flyer" which made a deliberate play on a slogan much used by Dyson: "100% suction power, 100% of the time". The slogan on the flyer, referring, of course, to the EPS, proclaims: "More suction power 100% of the time". Beneath this slogan appears, on the left-hand side of the flyer, a photograph of an EPS in cassette mode. To the right of the photograph, beneath the words "You decide!", there is a table which purports to make a number of specific comparisons between the EPS and three vacuum cleaners made by competitors. One of the other machines is the DC01. The remaining two machines are bag machines. Against the top line of the table appears the legend: "Most powerful motor on the market". The top line of the table gives a wattage of 1500 for the EPS as compared with 1200 watts for the DC01. No complaint is made of these figures, which accurately represented the size of the respective motors. The second line of the table also bears the legend: "Most powerful motor on the market". On this line the table gives a figure of 207 air watts for the EPS, as compared with 102 air watts for the DC01. The reference to air watts establishes that what is being compared on the second line of the table is in fact suction power. It is admitted by Electrolux that the figure of 207 air watts was a result which had been obtained by Electrolux in testing the suction power of an EPS in bag mode, and that the suction power of an EPS in cassette mode would have been substantially less.

33. As Glidewell LJ said in Kaye v. Robertson [1991] FSR 62, 67:

34. In Horrocks v. Lowe [1975] AC 135, at 150, Lord Diplock contrasted recklessness with "carelessness, impulsiveness or irrationality in arriving at a positive belief that [the matter complained of] is true".

37. In the course of his judgment in Vodaphone Group Plc v. Orange Personal Communications Services Ltd [1997] FSR 34, Jacob J traced the development of the law in relation to comparative advertising, saying this (at page 39 of the report):

38. In Cable & Wireless Plc v. British Telecommunications Plc [1998] FSR 383, Jacob J gave further consideration to the nature of the test of "honest practice" in the context of section 10(6), saying (at page 391):

39. In the instant case, both sides invite me to proceed on the footing the the test of "honest practice" is an objective one, and nothing turns on the question whether the test is fully objective (as suggested in Vodaphone) or something less than fully objective (as suggested in Cable & Wireless). In the circumstances, it is sufficient for me to say that I am content to proceed on the footing that the test is essentially an objective one.

40. As I indicated earlier in this judgment, each party seeks (among other things) injunctive relief and an inquiry as to damages. In relation to the claims of malicious falsehood, since no special damage has been pleaded or proved the damages (if any) will be at large (See Mr Milmo QC in reply [Day11/1369].). In the case of the claims of infringement of trade mark, each party claims loss of profits or, at its option, an account of profits made by the other party by its (ex hypothesi) infringing use of the trade mark.

41. I drew attention earlier (See page 3 above.) to the fact that this case is concerned essentially with raking over the ashes of past battles (or, perhaps more aptly, skirmishes) in the marketing war between Electrolux and Dyson, rather than with regulating the conduct of that war in the future. On that footing, injunctive relief may well be inappropriate in any event. Moreover, damages (whether in the form of general damages or of damages linked to profits), to the extent that they are more than merely nominal, will plainly be extremely difficult to assess and may ultimately prove to be relatively insignificant in terms of quantum. The fact that these considerations have not deterred the parties from fighting this protracted and expensive litigation vigorously to judgment only serves to confirm that they are more concerned with winning than with the obtaining of any particular remedy. "Victory, victory at all costs" appears to be the cry, on both sides. As Mr Prescott QC put it, rather more graphically, in the course of his closing speech when referring to Dyson's Counterclaim (Day9/1111.):

42. These factors must, it seems to me, have a bearing on what (if any) remedy should be granted in the event that either party succeeds in its claims. As I observed at the time (Day9/1112.), each side is aiming its nuclear weapons at each other and each is pressing the button. It is my task, in this judgment, to determine what are the legal and practical consequences of this high-risk strategy. The possibilities range from global conflagration to a damp squib.

44. In the first place, it seems to me to be inevitable that a reasonable member of the public (I will refer to him or her as "the customer"), when confronted by the graph in circumstances typical of those in which it was designed to be seen (As to which, see page 13 above.), would naturally assume that it was intended to depict the relative suction power of the two machines in ordinary use in accordance with the manufacturer's instructions and recommendations. The customer would, in my judgment, be bound to assume that the information conveyed by the graph was intended to have some direct bearing on the practical use to which the machines were designed to be put. The customer would in all probability not have heard of "air watts" before, but having read the slogan immediately above the graph ("Dyson - the only cleaner with no loss of suction") would deduce, correctly, that measurements in air wattage reflected in some scientific way the relative suction power of vacuum cleaners. On the other hand, in my judgment the customer would not have anything approaching a precise notion of the weight of the dust and debris collected by a vacuum cleaner in normal use before its receptacle (be it bag or cyclone cassette) needed emtpying. Thus, the weight of "dust" expressed in grams on the graph would have little or no meaning for the customer. In my judgment, the customer would naturally assume that the graph plotted the relative suction power of the two machines from empty to "full" (ie. to the point where, in ordinary use in accordance with the manufacturer's instructions and recommendations, the machine would be likely to need emptying). Similarly, the customer would interpret the word "dust" as meaning household dust, in the sense of dust and debris picked up by the machine in the course of a practical test in conditions designed to be reasonably typical of those which the machine would be expected to encounter in normal use.

54. On the evidence in this case, this representation was false. Tests carried out on EPS machines (in cassette mode) and DC01 machines (That is to say, machines of the same specification as those which were marketed in March 1997, when the graph was published.) when empty, according to an accepted industry standard known as "IEC Standard 312" (International Electrotechnical Commission Standard 312, 2nd edn., 3rd amendment 1994. This test is applicable only to empty machines. There is as yet no accepted industry standard test of the suction power of vacuum cleaners in use.), show that in virtually every case the EPS generated more air watts than the DC01 (Dr Brown's tests on DC01 machines having the same specification as those marketed in March 1997 - ie. the machines referred to as D and E in his supplemental report - gave an average of some 87 air watts, as compared with an average of 112.5 air watts for the EPS machines which he tested.). In most cases the EPS machines achieved more than 100 air watts when empty, whereas the DC01 machines (as marketed in March 1997 - ie. prior to modification) rarely reached 100 air watts, averaging about 90 air watts.

55. The representation was also false in so far as it purported to make a general statement as to the suction power of all EPS and DC01 machines on the market at the relevant time (ie. March 1997). In all the many IEC 312 tests of which evidence has been given in this case, no two EPS machines, and no two DC01 machines, have achieved the same air wattage when empty. This may be due to variations in the manner in which the standard test was carried out, or it may be due to variations between particular machines with the same factory specification. But whatever the reason, the assertion of consistency in air wattage when empty between particular machines with the same specification was wholly unsupported by any evidence, whether scientific or empirical. On the contrary, the evidence available in March 1997 showed not consistency in this respect but a lack of it: a feature which has been subsequently confirmed by the expert evidence in this case.

60. The experts are agreed that it is the fine particles of dust which are the primary cause of clogging in a bag machine (where the porous bag becomes progressively clogged in use) and that the same applies to the exhaust filter on an EPS (See paras. 38 and 40 of Mr Downham's first report, and Dr Brown's evidence in corss-examination at Day 7/919-920.). The evidence establishes (a) that the diameter of kaolin particles is of the order of 1 to 2 microns (A micron is one thousandth of a millimetre.) and (b) that particles of that size will form only a small proportion (by weight) of the dust and debris which may reasonably be expected to be picked up by a vacuum cleaner in ordinary domestic use. As Mr Dyson put it in evidence (Day 5/577.) (and as I find), kaolin:

Dr Brown himself described the use of kaolin as "an absolute worst case scenario" (Day 7/920.), and he accepted in cross-examination (Day7/947.) that a laboratory test using kaolin grossly exaggerates the clogging effect of dust on the exhaust filter of the EPS cassette

61. I conclude, therefore, that "feeding" a vacuum cleaner with a diet of neat kaolin powder is not a fair or accurate representation of the conditions which the machine may reasonably be expected to encounter in ordinary domestic use, and in particular that the use of neat kaolin will seriously exaggerate the loss in suction power which an EPS machine may reasonably be expected to suffer in ordinary domestic use. This conclusion is supported by Dr Brown's own evidence to the effect that in ordinary domestic use the cassette chamber of an EPS will require to be emptied more than once (and possibly several times) before it has picked up 300 grams of particles within the 1-2 micron range. The EPS machines which he tested were emptied a number of times before they had accumulated anything approaching 300 grams of dust and debris, and this occurred in the course of a field test designed to replicate ordinary use. The dust and debris actually picked up by these machines must therefore be assumed to have contained only a small proportion by weight of particles comparable in size with particles of kaolin. On that basis, the machine would have required emptying many more times before it picked up 300 grams of kaolin-sized particles (It follows that even if, contrary to my conclusions as to the meaning of the graph, the customer would have understood what 300 grams of "dust" represented in the context of a vacuum cleaner in ordinary domestic use, the Electrolux line on the graph is still grossly misleading (and the message it conveys untrue) in that it leaves out of account the need to empty the cassette chamber and (in consequence) the improvement in suction power which would result from so doing.).

62. My conclusion as to the clogging effect of kaolin is also confirmed by comparing the results of tests on an EPS machine undertaken by Dyson (under the supervision of Mr Bickerstaffe), using kaolin powder, with the results of Dr Brown's "real use" tests. The proportion of dust (by weight) which ended up on the exhaust filter of the EPS cassette in the Dyson test, using kaolin, was around 10.6 per cent (See M2/424.), as compared with around 2.6 per cent in Dr Brown's tests (See paragraphs 49-60 of Dr Brown's first report (H/9-10) and Day 7/944.). Dr Brown agreed in cross-examination (Day 7/947.) that this showed that the clogging effect of kaolin was some four times greater than that produced by the kind of dust and debris which an EPS machine might reasonably be expected to pick up in ordinary use (Dr Brown's tests being designed so far as possible to replicate ordinary use).

64. But the representation is also false in relation to the tests carried out by MWL on the EPS, using kaolin. For reasons which I have already given when considering representation (3), the use of kaolin powder does not fairly or accurately reflect the performance of an EPS machine in ordinary use, so far as suction power is concerned. It follows that no independent test had been carried out on either machine relating to its suction power in ordinary use according to the manufacturer's instructions and recommendations.

71. Mr McCourt, anxious, no doubt, to mark his arrival at Dyson with some positive initiative, lost no time in requisitioning a graph from the engineering department at Dyson. A draft version of the graph (M1/231.) was produced the next day (11 March 1997). On this draft version the engineering department had shown the suction power of the DC01 at a constant level of 90 air watts (substantially as shown by the horizontal "Dyson line" on the final version). To represent the comparable performance of the EPS in terms of suction power, the engineering department had plotted the results of the MWL tests previously commissioned by Dyson, using kaolin (See page 8 above.) (as shown by the "Electrolux line" on the final version).

74. Mr McCourt told me that it was he who decided to replace the reference to the tests on the EPS carried out by MWL (as quoted above) with the words "Independent test results". He said that he did not know at the time that no independent tests had at that stage been carried out in relation to the suction power of the DC01: to him, the graph merely demonstrated the differences between the two products in a clear and simple way (See paragraph 8 of Mr McCourt's witness statement (D/39).).

75. Mr McCourt also accepted that it was his decision to delete the reference to kaolin. He told me (Day8/1086.) that he did this because he did not believe that the reference to kaolin would be of any significance to the people who would be likely to read the cards and he thought retaining the reference to kaolin would be likely to cause confusion.

77. At the same time, it is manifest that Mr McCourt was guilty of gross carelessness in not checking the accuracy of the reference to independent tests. The more so as he had only recently joined Dyson and cannot have had any direct knowledge as to what, if any, tests had previously been carried out on the DC01. He simply assumed that an independent test had been carried out on the DC01, and did not take the trouble to check whether his assumption was correct. As he put it himself in cross-examination (Day8/1086.):

78. As to the deletion of the reference to kaolin, that was an error of judgment on Mr McCourt's part, born of his ignorance of the significance of using kaolin to test the suction power of vacuum cleaners. Once again, he can be criticised for not informing himself on this matter before altering the draft version of the graph, but (as Lord Diplock made clear in Horrocks v. Lowe (above)), carelessness is not to be equated with recklessness.

79. On her return from holiday Miss Trentham approved the final form of the card containing the graph (although she told me that she had no specific recollection of having done so, or of having discussed it with the Graphics Department). She also wrote a covering circular letter to retailers (M1/238-9.). The covering letter refers encouragingly to Dyson's forthcoming television advertising campaign, and to the continuing success of Dyson products. The letter concludes:

81. 1.Miss Trentham told me in cross-examination (Day7/870.), and I accept, that it did not occur to her to question the information on the draft graph provided by the engineering department. The production and publication of the card was completed in something of a rush, and it was primarily Mr McCourt's project, in conjunction with the Graphics Department. As I said earlier, Miss Trentham's contribution to the project was essentially peripheral. I am satisfied that her conduct in relation to the graph was not motivated in any degree by malice.

86. On the following day, 27 March 1997, Mr Bickerstaffe and Mr Briggs went to see Mr Dyson. Mr Dyson was incredulous when told the results of Mr Bickerstaffe's in-house tests on the suction power of the DC01. I accept his evidence that his belief has always been that the DC01 suffers no loss of suction power in use. Thus, when Mr Briggs and Mr Bickerstaffe came to see him he was adamant that, in contrast to the EPS, the suction power of the DC01 remained constant when in use. He told me in cross-examination (Day5/621.) (and I accept) that he was previously unaware that this had not as yet been verified by any independent test. He did not, however, give instructions for the graph to be withdrawn. When asked in cross-examination why he did not do so, he replied:

He went on to say this (Day5/622.):

87. Later in his cross-examination, however, Mr Dyson corrected this evidence by substituting "ultimately" for "immediately" (See Day6/676.). The inaccuracy of his earlier evidence, on a matter directly in issue in the action, does Mr Dyson little credit. However, as I said earlier, I am satisfied that he was an honest witness, and I can only assume that in the heat of the moment he momentarily lost his objectivity and that his recollection temporarily deserted him. At all events, having had the opportunity to consider the transcript of his earlier evidence overnight he did make the necessary correction.

88. Mr Bickerstaffe was also content that the graph should continue in circulation, despite the reference to independent tests. As he put it in cross-examination (Day7/820.):

89. In support of its allegation of malice, Electrolux pleads (See paragraph (b) of the particulars of malice pleaded in paragraph 10 of the Re-Amended Statement of Claim.) that Dyson published the graph knowing:

90. This allegation is not made out. I accept the evidence of Mr Dyson and Mr Bickerstaffe that they have at all material times believed tests using kaolin to be an appropriate and a fair method of measuring to the clogging effect of household dust on the suction power of a vacuum cleaner (See, for example, Mr Dyson's evidence in cross-examination at Day5/577 and Mr Bickerstaffe's evidence in cross-examination at Day6/760.). This belief is based on the proposition that kaolin is representative of the finer particles of household dust, and - as the expert witnesses agree - that it is the finer particles which cause filters (and bags, in the case of bag cleaners) to clog (See Mr Dyson's evidence in cross-examination at Day5/592, and Mr Bickerstaffe's evidence in cross-examination at Day6/774.). However, what Mr Dyson and Mr Bickerstaffe failed to appreciate was that (for reasons which I have given earlier in this judgment), in the context of a graph purporting to plot progressive loss of suction power as 300 grams of "dust" is loaded into an EPS in the course of ordinary use in accordance with the manufacturer's instructions and recommendations, the use of kaolin produces grossly exaggerated results.

93. As for Mr Dyson, I have already found that he believed the information conveyed by the graph itself, both in relation to the EPS (based on the MWL tests using kaolin) and in relation to the DC01, to be true. In cross-examination Mr Dyson said this (Day5/624.):

I accept that evidence. I also accept Mr Dyson's evidence (Day5/531.) that Dyson has always tried to be accurate in its promotional material - although that evidence has to be accepted subject to the qualification that in relation to the statement "Independent test results" Dyson took no steps to correct what it knew to be an inaccuracy.

94. In my judgment, the fact that Mr Dyson did not take steps, ex post facto, to withdraw the graph does not serve to render the publication of the graph malicious in circumstances where, as I have found, Mr McCourt himself was not motivated by malice (either actual or inferred).

96. In further support of the allegation of malice in relation to the publication of the graph, Electrolux relies (See paragraph (f) of the particulars of malice pleaded under paragraph 10 of the Re-Amended Statement of Claim.) on the fact that despite the results of the MWL tests of 9 June 1997 Dyson took no steps to withdraw the graph. In my judgment, this fact does not, either alone or in conjunction with the other matters relied on by Electrolux in this context, serve to raise an inference of malice on the part of Dyson at the time of publication of the graph.

97. In his cross-examination of Mr Dyson, Mr Milmo sought to establish a course of conduct by Dyson in its promotional strategy and in the advertising of its products, with a view to demonstrating a general recklessness on Dyson's part as to the truth or falsity of the representations made. It is plain on the evidence that Dyson has in the past been guilty of making exaggerated and misleading claims in the promotional material (As an outstanding example, see the flyer (at M1/2) which claimed that: "[a]fter vacuuming just 500 grams of dust, that's barely a cupful, a normal vacuum cleaner has lost 70% of its power". Mr Bickerstaffe's practical demonstration, in the course of his cross-examination, proved that "cupful" in this context can only have referred to a giant-sized breakfast cup.), but - given my earlier findings - that is not sufficient to raise an inference of malice in the publication of the graph.

101 I find (indeed Mr Dyson accepted in evidence (Day5/629.)) that Mr Dyson said in terms to Ms Susan Dean that the Elextrolux cassette system "did not work". In context (See Susan Dean's notes of her telephone conversation with Mr Dyson (at C2/5), and see also Mr Dyson's evidence in cross-examination at Day5/629.), however, it is clear that the meaning of what Mr Dyson said was not that the cassette system was wholly inoperative in the sense that it failed to separate any dust and debris from the airflow, but that it did not work as, in his opinion, a cyclone should work. As Mr Dyson put it in cross-examination (Day5/630.):

102. In cross-examination, Ms Dean said that she understood Mr Dyson to mean that the EPS "did not work, full stop, did not perform" (Day2/95.). If by that answer she meant that she understood Mr Dyson to say that the EPS cassette system did not work at all (and from her subsequent answers that does appear to have been her understanding), then I can only conclude that she took Mr Dyson's words out of context.

103. It is certainly the case, as proved by the various tests of the EPS in evidence in this case, that a proportion of the dust picked up by the EPS ends up on the exhaust filter. Indeed, that is hardly surprising since the EPS is designed to function in that manner. As I explained earlier in this judgment (See page 7 above.), that is one of the features which distinguishes the EPS from the DC01. But whether that justifies the comment that the cassette system "does not work", in the sense that it does not work as a cyclone should, is an entirely different matter. It seems to me that, in context, such a comment is more an expression of opinion, or a subjective judgment, than a representation of fact. In my judgment, in using the words which he used, in the context in which he used them, Mr Dyson was not making any untrue statement of fact such as could support a claim in malicious falsehood. He was doing no more than expressing his own view - albeit in forthright terms - as to the effectiveness of the Electrolux cassette system: a view with which, needless to say, Electrolux emphatically disagrees.

105. Had Mr Dyson conveyed the meaning for which Electrolux contend (ie. that the cassette system of the EPS did not work at all), and had he done so maliciously, then Electrolux must also have succeeded on the issue of damage. In the event, however, in the context of the claim in malicious falsehood the issue of damage does not arise. I repeat, however, observations which I made in relation to damages earlier in this judgment (See page 35 above.).

107. It will be recalled that the flyer (A/32.) purported to compare certain specified characteristics and capabilities of the EPS with those of three competitors, two being bag cleaners produced by other manufacturers and the third being a cyclonic cleaner, namely the DC01. One of the specified characteristics of the EPS shown in the comparison table was the option of using either a bag or the cyclone cassette (see the reference to "Bag/Bagless option"). The EPS is shown (correctly) as providing that option whereas the other machines are shown (correctly) as not doing so. In that context, a fair comparison between the EPS on the one hand and the DC01 on the other plainly required that the air watts figure for the EPS should relate to its performance in cassette mode. Although the customer looking at the flyer may be credited with a healthy degree of scepticism, he or she would in my judgment have assumed that, at the very least, the comparison which the flyer purported to make between the air wattage of the EPS and that of the DC01 was a fair one, in the sense that it involved a comparison of like with like. Hence, the customer would, in context, have understood the air wattage figure for the EPS to relate to its performance both in bag and in cassette mode.

109. Although not formulated in the precise terms in which I have formulated them, each of the above representations is in my judgment sufficiently pleaded in Dyson's Counterclaim (See paragraph 17 of the Defence and Counterclaim (A/25-26).).

111. This representation is false. The figure of 207 air watts admittedly relates only to the EPS in bag mode: the corresponding figure in relation to the EPS in cassette mode (tested by USITT at the same time) would have been 97.25 air watts (See paragraph 17 of Mr Downham's witness statement (B22).) (alternatively, on a "best result" basis, around 133 air watts (See paragraph 19 of Mr Downham's witness statement (B/23).)).

112. Moreover (as with the corresponding representations made in the graph) the flyer is misleading in that it implies that all machines of the same model and having the same specification achieve a uniform level of suction power. In fact, the figure of 207 air watts was achieved by a single EPS machine tested by USITT. On the available evidence, no other tests have given such a high figure for the suction power of an EPS in bag mode. The USITT tests (carried out in accordance with IEC Standard 312, ie. on empty machines) showed the suction power of the DC01 machine as 102.1 air watts, as compared with 97.25 air watts for the EPS machine in cassette mode. Mr Downham explained the lower suction power of the EPS machine by pointing out that the relief valve opened early, thereby preventing the machine from achieving its full suction power (See paragraph 18 of his witness statement (B/22-23).). To my mind, however, this incident demonstrates just how variable can be the results of tests of suction power carried out to the same protocol, and just how unsafe it is to rely on such results as the basis for comparative advertising.

113. This representation is also admittedly false (See Mr Downham's evidence in cross-examination (Day3/248-9).).

114. This representation is also admittedly false (See ibid.).

115. This representation is also admittedly false (See the results of the USITT tests as set out in paragraph 17 of Mr Downham's witness statement (B/22).).

119. Mr Chapman suffered what one might charitably describe as an unhappy experience in the witness box. In the witness statement which formed the basis of his evidence-in-chief, he presented himself as being at all stages directly involved in and responsible for the design and publication of the flyer. However, as his cross-examination proceeded it became increasingly apparent (both from his own evidence and from an examination of the contemporary documentation) that his role was a very much more limited one. For example, in paragraph 5 of his witness statement (B/14.) he referred to a meeting which took place on 9 July 1997 in terms which clearly implied that he was present at the meeting. In cross-examination, however, after some uncomfortable to-ing and fro-ing, he finally admitted that he had not been present (Day4/517.) at the meeting. In other respects too his evidence in cross-examination departed materially from his witness statement (See, for example, Mr Chapman's initial denial in cross-examination that the slogan on the flyer was a play on Dyson's slogan "100% suction power 100% of the time" - a denial which he had to retract when referred to his express assertion in his witness statement that that was the case (Day5/493).).

123. The first draft of the flyer (C/25.), which is handwritten, differs from the final version in the following respects:

124. The second draft of the flyer (C/31.) substitutes the legend "Most powerful motor on the market" against the second line of the comparison table (repeating the legend against the first line), and underneath the one tick and three crosses which complete that line it includes the air wattage figures which appear in the final version. The air wattage figure for the EPS (207 air watts) has an asterisk against it with a footnote (appearing immediately below the comparison table) stating:

125. The second draft of the flyer incorporates a further change in showing the EPS in cassette mode instead of in bag mode. A fax from Mr Greenhalgh to Mr Colley dated 9 July 1997 (C/30.) indicates that these changes were made on Mr Colley's instructions.

126. By a handwritten memorandum (At C/32.) from Mr Colley to Mr Greenhalgh dated 14 July 1997 Mr Colley asked Mr Greenhalgh to make two further changes to the form of the flyer. The first was to change the slogan at the top of the flyer (referred to in the memorandum as "the Headline") to that which appears in the final version, ie. "More suction power, 100% of the time". This change was prompted by a suggestion made by Mr Patterson, following the meeting on 9 July 1997 to which Mr Chapman refers in his witness statement - and at which (as he eventually accepted) he was not present. The new slogan was intended as a play on Dyson's much-published slogan: "100% suction power, 100% of the time". The second change was to delete the footnote stating the suction power of the EPS in cassette mode.

131. I should add, for completeness, that in support of its allegation of malice in relation to the flyer (and in rebuttal of the allegation of malice on its part in relation to the graph) Dyson relied (See paragraphs 5 and 19 of its Amended Defence and Counterclaim.) on a document compiled by Miss Farmer entitled "Performance Comparison" (K/285.), in which the suction power of the DC01 is compared with that of the EPS in cassette mode. In my judgment, however, this document takes the matter no further.

132. This issue does not arise (but I refer once again to my earlier observations on the issue of damages in the context of malicious falsehood (Page 35 above.)).

135. Although, as I have already held, neither the graph nor the flyer was published maliciously, the fact remains that each was a thoroughly misleading document, containing a number of false representations. Given that the test of an "honest practice" for the purposes of the proviso to section 10(6) of the Trade Marks Act 1994 is agreed to be an objective one (See page 15 above.), the conclusion is in my judgment inescapable that in each case the use made of the competitor's trade mark was "otherwise than in accordance with honest practices in industrial or commercial matters" within the meaning of the proviso. To hold the publication of documents such as these to be an "honest practice" for this purpose would in my view be to render the proviso of negligible practical use or effect.

143. In the first place, as at present advised it seems to me to be a real possibility that any damage caused by the particular infringements which have been established in this case - ie. by the publication of the graph and the flyer respectively - may be negligible, if not nominal. It occurs to me to wonder how many consumers are significantly influenced by a single piece of promotional material such as the graph or the flyer, to the point where they are deterred from purchasing a particular type of machine and/or persuaded to purchase a different type of machine. It must, after all, be remembered that, as I pointed out earlier (See page 16 above.), the graph and flyer were but single incidents in the course of a continuing marketing war between Electrolux and Dyson.

145. In this connection, I refer once again to the general observations which I made about damages earlier in this judgment (See page 35 above.) in the context of the malicious falsehood claims: the same observations apply, mutatis mutandis, in the context of the claims of infringement of trade mark.

147. In the light of these concerns, before directing any inquiry as to damages I must be satisfied that there is, at the very least, a realistic prospect of the inquiry resulting in the award of a sum which is other than negligible in relation to the time and costs involved. In Macdonald's Hamburgers Ltd v. Burgerking (U.K.) Ltd [1987] FSR 112 CA, Fox LJ said (at page 118):

See also The Sanitas Company Ltd v. Condy (1887) 4 RPC 530 at 533 per Kekewich J, cited by Fox LJ later in his judgment in the Macdonalds case (See ibid. p.118.).