Consumer perception lies at the heart of trade mark law, but identifying precisely what that might be in a form which satisfies judicial inquiry can prove elusive. Many parties turn to market surveys, but these are often found by courts and tribunals to be so poorly designed and lacking in objectivity that they are given little weight and rendered useless as evidence. As a consequence, parties frequently waste significant time and money and place an unnecessary burden on the legal infrastructure.
To try and address this inefficient use of resources, INTA’s Enforcement Committee has compiled a report (here) which considers guidelines and best practices from dozens of countries. By understanding the best practices in survey design, execution and presentation, the hope is that a framework for authoritative and universal guidance can be developed. This will allow a degree of harmonisation and prove to be a persuasive tool for those jurisdictions where guidance is under-developed or non-existent.
Despite containing examples of when a survey might be useful, tips to maintain the integrity of the data for use as evidence and an overview of the position in 28 countries, the report recognises that it is only a first step on a long road. Guidance in many countries is nascent at best and the issue is likely to be fertile ground for development for some time.
However, it is encouraging that common themes have emerged, for instance, the more “scientific” a survey’s data collection is, the more robust will be its conclusions. In the context of costs, courts in several countries are also beginning to question from first principles the usefulness of surveys, particularly where the marks and the goods are within the judge’s own knowledge.
Only time will tell whether these nebulae of legal thinking will develop into firm universal doctrine or disappear into a black hole. Either way, the report hopefully contributes some useful and interesting illumination to a topical issue.
If you have any comments on the report or would like to contribute to the next edition for your country, please get in touch.
Chair – Judicial Administration and Trademark Litigation SubCommittee, INTA