Survey evidence in trade mark matters: or, can you illuminate a black hole?

This Kat is always delighted to follow the fortunes of former guest Kats as they scale the heights of their respective professions. Robert Cumming, who was a guest Kat for the second half of 2012 is no exception. He has been busily running INTA -- or at least part of it -- in recent times and this is what he has to say:

"Astute (and sober) readers might still recall this ex-guest Kat’s New Year's Eve missive and final post of 2012 (here) which related to the formulation of best practices in conducting surveys in trade mark matters. I am pleased to say that, after some considerable effort, and having just about recovered from the Leadership Conference in Miami, the report is available on the INTA website here.

As the Judicial Administration and Trademark Litigation Subcommittee chair for INTA’s Enforcement Committee next term, one of the projects I will be leading is to improve upon and expand the report. If any of your aelurophile readers are willing to contribute to the Zeitgeist in this dynamic area of practice, do please pass on my details (robert.cumming@appleyardlees.com). To whet their appetites, the introduction is also set out below.

Enforcement Committee Report on Survey Evidence in Trademark Matters

Great title, but it won't
cut much ice in court ...

Consumer perception lies at the heart of trademark law, but identifying precisely what that perception might be in a form which satisfies judicial inquiry can prove elusive [Not quite, says Merpel: it's judicial perception that lies at the heart of trade mark law, and the problem is how to identify precisely a form of words that suggests the judge's perception but which is couched in terms of what the consumer is believed to perceive]. 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 [for good example, see this report by Suzy Shinner in MARQUES's Class 46 blog, in which British judges discuss whether surveys are dead, merely sleeping or pining for the fjords]. As a consequence, parties frequently waste significant time and money and place an unnecessary burden on the legal infrastructure.

To address this inefficient use of resources, the Courts & Tribunals Subcommittee of INTA’s Enforcement Committee has compiled a Report (available on the INTA website here) which considers guidelines and best practices from dozens of countries. By understanding these best practices in survey design, execution and presentation, the Subcommittee hopes that a framework for authoritative and universal guidance can be developed. This framework will allow for a degree of harmonization and prove to be a persuasive tool for those jurisdictions where guidance is underdeveloped or non-existent [what about something for those jurisdictions where the guidance is overdeveloped too, wonders Merpel].

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 recognizes that it is only a first step on a long road. Guidance on the admissibility of survey evidence of consumer confusion, in many countries, is nascent at best and the issue is likely to be fertile ground for development for some time.

It is encouraging, however that common themes in survey admissibility have emerged. For instance, the more "scientific" a survey's data collection is, the more robust will be its conclusions [Those tell-tale quotation marks: one of the problems with surveys is that they're not scientific, but "scientific"]. 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 [Now here's a great debating point, says the IPKat: should the fact that marks and goods are within the judge's own knowledge be a reason for dispensing with surveys entirely, or for making them absolutely mandatory?]

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 Subcommittee’s Report contributes some useful and interesting illumination to a topical issue [Merpel thinks the report won't contribute any illumination in a black hole, but that's another matter].