Take away

The question of whether a trade mark is registerable is now viewed by the Courts from the consumer perspective of the ordinary significance of the mark. As brand owners increasingly seek to develop and protect trade marks that carry some descriptive meaning to consumers, it is likely to become increasingly important to be able to establish that these brands are inherently distinctive (and therefore registrable as trade marks) through consumer survey evidence. For evidence of this type to have any probative weight, the survey questions must be relevant and unambiguous, with a clearly defined and unbiased survey methodology.

Summary

Consumer surveys have long been denegrated by Courts as being of little use in trade mark cases to establish likelihood of confusion. The probity of these surveys has been of little concern for establishing trade mark distinctiveness because the key legal question for inherent distinctiveness has been the legitimate need for other traders to use the mark.

However, the High Court decision in Cantarella Bros (Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48) has placed the consumers view front and centre to establishing distinctiveness. Does this mean that a swing back to acceptance of survey evidence must follow in trade mark case law? What is clear is that for consumer survey evidence to have any probative weight, the survey questions must be relevant and unambiguous, with a clearly defined and unbiased survey methodology.

Background and history

Consumer surveys were once considered valuable evidence to establish likelihood of confusion (or lack thereof) in trade mark infringement and passing off cases globally. The aim was to collect data relating to the beliefs and attitudes of consumers towards products, concepts, or names. In the US the American Bar Association in 2006 even went as far as to claim that a good survey has the potential to supersede other forms of evidence by saying that these are ‘traditionally one of the most classic and most persuasive and most informative forms of trial evidence that trade mark lawyers utilize’.1

However, recent times have seen consumer surveys being given very little weight. This new scepticism as to the validity and utility of survey data is mainly attributed to the rise of an industry around survey production and expert testimony. Some common survey issues include:

  • selection and size
  • presentation of the allegedly confusing products
  • the phrasing of questions in a way that is intended to elicit the surveyor’s desired response
  • the information provided by consumer surveys being seen as anecdotal evidence from a few people who did not, in basic statistical terms, constitute a representative sample
  • consumer surveys and market research reports being seen as ‘business records’ and ‘admissible’, but being accorded little weight

The lack of reliability of the information provided by consumer surveys has resulted in judges being increasingly reluctant to base their judgments on consumer evidence.

However, now that the High Court in Cantarella Bros has confirmed that to establish trade mark distinctiveness, the key issue is the ‘ordinary significance’ of the proposed trade mark from the consumer’s perspective (followed by the legitimate need of other traders to use a particular mark in the ordinary course of their business), the issue of how to establish this consumer view will need to be considered.

Increased use of descriptive trade marks- will this drive increased reference to survey evidence?

For brand owners, there are  increasing numbers of new trade marks being developed which contain descriptive sign posts for consumers. The benefits from a marketing perspective are obvious. However, this means the question of whether a mark is inherently distinctive, and therefore readily able to be registered for protection as a trade mark, is being more frequently considered.

Consequently, since the decision in Cantarella Bros, how the consumer centric view of the ‘ordinary significance’ of a brand is to be established for the purposes of establishing registrability must be considered.

The traditional method of consumer survey evidence to establish the consumer view has been given little weight by the courts in trade mark infringement matters in relation to consumer confusion. However, brand owners will need to revisit their ability to create strongly probative consumer surveys for the purposes of establishing whether their brands will be seen by consumers as distinctive of their goods, or merely descriptive, if the  registrability of the brand as a trade mark is questioned.