Are trademark surveys worth the cost?

The probative value of a comprehensive trademark survey rarely justifies its cost. Even a relatively inexpensive trademark survey of modest scope can be valuable to a court if:

• it is designed and conducted fairly;
• it measures the right issue;
• its importance is not overstated; and
• it is only one of a number of pieces of evidence relied on.

Owing to decades of experience and scientific knowledge, properly conducted trademark surveys can assess the perceptions of selected universes of consumers with reasonable accuracy. However, the question remains whether the probative value of a trademark survey justifies its cost. The survey will often support the judge’s common sense perception; or, if not, the judge will find ways to reduce its weight or exclude it. This is not a criticism of surveys – rather an observation of how judges tend to react to the results of surveys that they disagree with.

In Interflora v Marks and Spencer (1 and 2) a UK court found that anecdotal evidence from a number of witnesses “cannot stand proxy for the impression of the average consumer”. The court decided that:

• a party may conduct a pilot survey without permission, but at its own risk as to costs;
• no further survey may be adduced without the court’s permission and disclosure of the pilot survey; and
• no party may adduce evidence from survey respondents without the court’s permission.

Even though a survey may be technically admissible, the court must evaluate at an early stage whether it would be of ‘real value’ and whether its likely benefit would justify its cost.

Masterpiece v Alavida is a leading Canadian Supreme Court case involving survey evidence. Writing for a unanimous court, Justice Rothstein referred to the following principles set out in R v Mohan in considering the admissibility of expert evidence in trademark cases:

• relevance;
• necessity in assisting the trier of fact;
• the absence of any exclusionary rule; and
• a properly qualified expert.

The judge emphasised that expert evidence must be necessary and not merely helpful, while an expert’s opinion must not be affected by the objectives of the party that retained the expert.

The court’s remarks do not mean that survey evidence has no place in trademark litigation. On the contrary, it is likely that in many cases the relevant universe of consumers may be unfamiliar to the trial judge, or the market addressed by the competing goods or services may be specialised and outside the knowledge of the trial judge. In addition, where the gap between the respective goods and services of the competing trademarks or the differences in the competing trademarks is sufficiently large, even experienced lawyers and judges might see no likelihood of confusion when significant confusion in fact may exist. Moreover, surveys are only one aspect of social science that can be used in proper cases to prove or disprove public perceptions relating to likelihood of confusion.

The tension between judges’ reluctance to give up deciding likelihood of confusion issues for themselves except in particular situations and the scientific approach to measuring consumer perceptions leads to a more fundamental question: whether the likelihood of confusion test ought to be supplanted with a system that more properly balances the rights of traders and the rights of the public to freedom of competition.