The need for submitting survey evidence can arise in the context of establishing distinctiveness for the purpose of obtaining trade mark protection for your trade mark, or in the context of a trade mark infringement dispute to show the likelihood of deception or confusion. For instance, the absence of a market survey was the subject of adverse comment in a recent decision of IP Australia relating to the registrability of the colours Orange and Purple as a trade mark in relation to Discount Drugstores' pharmacy services.

It is advisable to pay close attention to the various guidelines and requirements which have been set down in relevant decisions of IP Australia and the Federal Court to ensure that your survey evidence is admissible and persuasive. For comprehensive insight into these various guidelines, please click here.

  1. Optimal Timing of a Market Survey

    In general, it is preferable to conduct an appropriate survey prior to the filing of the trade mark application if serious distinctiveness objections are anticipated, particularly if the trade mark is "non-traditional" e.g. a colour or shape. A survey indicating that 100% of survey respondents were aware of the perfume brand BEAUTIFUL was disregarded because it was conducted 5 years after the filing date of the BEAUTIFUL trade mark application.
  2. Number of Survey Respondents 

    The input of a marketing expert should be sought with regard to the appropriate number of survey respondents, because if the sample is too low it is unlikely to be afforded much weight by IP Australia or a Court. A marketing expert will be in a position to devise the statistically significant number of respondents for the purposes of the particular survey.
  3. Select the Relevant Market 

    The survey respondents should be drawn from the relevant consumer market, including with regard to gender, age, geographic location, etc. For example, if a survey is required in relation to a petrol brand then the survey should only include respondents of a driving age. A survey conducted by Cadbury relating to its reputation in the colour Purple was criticised by the Court on the basis that no children were involved.
  4. Use Non-leading Questions 

    A survey will be subject to attack if it includes leading or ambiguous questions and so considerable care is required when devising survey questions. In this regard, it may be inappropriate to allow a "Yes" or "No" answer in a survey in circumstances where a gradation of answers may be appropriate. Such questions should be carefully directed to the issue which is to be considered by IP Australia or the Court.
  5. Survey Context 

    Consideration needs to be given to ensuring that the survey is not conducted in an artificial context, bearing in mind the relevant goods and services at issue.

In conclusion, it is apparent that considerable expertise and care is needed in connection with devising a suitable survey which will be most likely to support your trade mark. If regard is had to the above steps, you will greatly enhance the prospects of obtaining robust survey results. If you are considering conducting a survey, we recommend that you obtain our assistance and advice at the outset to ensure that you are on track and able to navigate around the potential pitfalls.

(For a more detailed discussion of the above issues please refer to the article Survey Evidence in Trade Mark Disputes – A Sledgehammer to Crack a Walnut?).