Background
B&Q sued Wren Kitchens for trade mark infringement under sections 10(1) and 10(3) of the Trade Marks Act 1994 over eight sets of advertisements comparing the prices of the companies’ flat-packed kitchens. The advertisements included statements that Wren cost less than B&Q. Wren denied infringement on the ground that the comparisons were true.
Wren counterclaimed for trade mark infringement based on B&Q’s alleged comparative advertising involving tables from the third-party Kitchen Compare website, operated by Insight Retail Group Limited. Wren alleged that B&Q presented the website as independent when it was not. After extensive disclosure, Wren applied under paragraph 18 of Practice Direction 57AD to amend the Disclosure Review Document and require additional searches, including searches covering more custodians, broader dates and keywords, and images containing Wren’s device marks.
The court considered whether the proposed variations were necessary for the just disposal of the proceedings and reasonable and proportionate. It did so against the background of disclosure budgets approaching £1.4 million, more than 600,000 documents initially ingested by B&Q, and over £600,000 already spent by B&Q on disclosure.
The Court’s Holding
The court allowed Wren’s application only in limited respects. For disclosure issues 11A, 12A and 13A, it ordered B&Q to add employee Gemma Reilly as a head-office custodian because she had been specifically asked to coordinate activity concerning promotion of the Kitchen Compare website. It also extended the end date for the relevant head-office searches to 31 December 2018. The court refused to add seven other recipients of a related email because there was no evidence that they had acted on it.
The court also allowed disclosure under issue 16A, concerning information available to B&Q or consumers to verify the newly pleaded Store Price Claims and In-store Website Claims. The parties were directed to try to agree the search parameters, with the court to decide them without a hearing if necessary.
The remaining requests were refused. The court found that broader searches concerning B&Q’s relationship with IRG, the website’s creation and quality criteria, training and promotional materials, and additional keywords were unnecessary or disproportionate. It also rejected a proposed AI-assisted image search estimated to cost about £100,000, concluding that the expense was disproportionate given the low likelihood of finding relevant material. B&Q was ordered to conduct the additional searches it had offered, as modified by the judgment.
Key Takeaways
- A party seeking to vary an extended-disclosure order under PD57AD must show that the additional disclosure is both necessary for the just disposal of the case and reasonable and proportionate.
- The court permitted targeted additions where the evidence identified a particular custodian and a justified extension of the search period, but rejected broader searches that risked duplicating extensive work already completed.
- Lower technological costs did not make image searching proportionate: an estimated £100,000 remained excessive where the search was unlikely to uncover relevant evidence.
Why It Matters
The decision illustrates the High Court’s pragmatic approach to revisiting disclosure in complex intellectual-property litigation. Amended pleadings may justify focused additional searches, but they do not provide a general opportunity to redo disclosure because an earlier exercise produced fewer helpful documents than expected.
It also shows that courts will assess technology-assisted disclosure by reference to likely evidential value as well as cost. Even improved AI tools and a substantial reduction in estimated expense will not justify a search that remains unlikely to contribute materially to deciding the case.