Out-Law Analysis | 10 Dec 2013 | 5:17 pm | 4 min. read
Survey evidence may be admissible as a matter of course in trade mark disputes in other jurisdictions, but in the UK judges need to be persuaded they are worthwhile before they will sanction them.
Case law in the UK has developed a number of guidelines around the use of survey evidence that ensure that their inclusion in trade mark cases is rare. This is something noted in the International Trademark Association's recent report on best practices in conducting surveys in trade mark matters (120-page / 1.97MB PDF) .
However, well thought out surveys can help demonstrate consumer confusion or clarity about the origins of a branded product or service, but businesses must also be aware of the risk that evidence gathered could work against them.
Why seek a survey in the course of a trade mark dispute?
Trade mark disputes are often about the extent to which consumers have allegedly been misled into purchasing goods or services marketed by companies that have used signs that are identical or similar to those owned by a trade mark holder.
Survey evidence can be gathered to seek to demonstrate that consumers have been confused about the origins of the goods or services they have bought as a result of the use of a sign identical or similar to a trade mark. Parties in dispute will often turn to witnesses to help support the case they are presenting, but it is unusual for people to volunteer evidence of their own confusion. Surveys can be used to gather this evidence and add weight to a case.
Alternatively, surveys can be used to demonstrate that there is clarity in the minds of a consumer and that there has been no confusion caused by the use of a sign, although proving a negative is arguably more difficult to achieve.
Why are the views of a consumer important to demonstrate?
Under UK law, trade marks give protection against the unauthorised use of business brands in a number of scenarios. First, businesses can prevent others from using their trade mark to market the same goods or services covered by the trade mark.
Second, businesses can prevent rivals using their mark when they are selling similar goods or services that they sell. They can also prevent them using a similar mark to their trade mark to market identical or similar goods or services covered by the trade mark.
In addition, trade mark protection can extend to cases where a rival company uses a trade mark, or a mark that is similar, when selling goods or services that are not similar to those covered by the trade mark. Protection applies where it is shown that the trade mark holds a reputation in the UK and that others' use of their sign, without due cause, has taken unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.
EU case law requires courts to consider "the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect" when determining whether the use of a trade mark has been misleading. A "significant number of persons" have to have been confused in order for the use to be deemed as misleading.
Separately, the Court of Justice of the EU has also determined that the function of a trade mark can only be said to have been "adversely affected" where "reasonably well-informed and reasonably observant" consumers are unable to determine whether goods or services advertised "originate" from a trade mark owner or not, or can only do so "with difficulty".
How is the use and scope of surveys controlled?
Businesses generally need the permission of a court to undertake a consumer survey as part of a trade mark dispute in the UK. Judges are mindful of the costs that can be associated with undertaking such research and will look for businesses to demonstrate a real need for such evidence to be gathered. Judges are less likely to be persuaded of the usefulness of potential survey evidence where they feel that they themselves can interpret what the 'average consumer' would have made about the use of a sign in dispute.
Businesses wishing to gather survey evidence may have to absorb the cost of a pilot survey to demonstrate the usefulness of a more comprehensive study to the court. As a part of that process, businesses would need to enter into dialogue with the court and parties they are in dispute with in a bid to facilitate agreement on the questions that would be asked. The survey itself should be conducted entirely independently of the organisation seeking it.
Without this transparent and unbiased process some survey evidence could be deemed inadmissible, or in the worst case deemed to be entirely unusable. The courts look dimly upon procedures that add time and cost to proceedings.
Survey evidence risks and rewards
It is important to consider and prepare the methodology behind a survey before putting proposals before a court. This is businesses' chance to ensure the evidence gathered will be robust. Opponents will challenge evidence they deem to have been drawn from biased or leading questions and judges will reject evidence gathered from people deemed not to represent the average, reasonably well informed and observant consumer relevant to the dispute.
But the fact is by proceeding with a survey you are creating evidence which is disclosable. For better or worse, the evidence gathered will be open to be used as part of proceedings. The risk is that results from the survey can be used to disprove the point those that initiated a survey are seeking to show.
It is not a simple case that the majority of evidence gathered from a survey will be determinative. Evidence of confusion from a minority of people surveyed can be persuasive providing that minority is significant - something that will only be determined by judges on a case-by-case basis.
However, with well prepared methodologies and open engagement with the courts on the content of surveys, businesses can use the evidence gathered as a persuasive tool in helping judges to settle trade mark disputes in their favour.
David Woods is an intellectual property law litigator with Pinsent Masons, the law firm behind Out-Law.com. He has constructed surveys relied on during legal proceedings when acting for Asda and Intercontinental Brands in trade mark disputes against Specsavers and Diageo respectively.