Adidas brought an application under section 120 of the Trade Marks Act 1995 (Cth) seeking a declaration that Pacific Brands had infringed its three-stripe trade mark by supplying certain footwear which also displayed decorative stripes. It also sought an order to restrain them permanently from doing so (adidas AG v Pacific Brands Footwear Pty Limited [2011] FCA 1205).

In preparing its evidence, adidas filed a Notice of Proposed Survey which went to the issue of whether the mark in question was deceptively similar to its trade mark. Pacific Brands applied for orders that adidas not be permitted to use or rely upon a survey, or the proposed survey, as evidence.

It argued that there was no necessity for survey evidence, and that it was a waste of resources, since both questions to be tried in the proceedings were questions of law and therefore, to be determined by the judge (assisted by qualified expert evidence).

Pacific Brand's application for relief was dismissed.

Justice Robertson was not convinced that adidas should not be allowed to use or rely upon any survey. The main question was whether he was persuaded that it should not be permitted to use or rely upon the proposed survey as evidence.

The basis of Pacific Brand's case was that the question of deceptive similarity was a matter for the judge alone and so any evidence found by the survey would not be relevant and so would not be admissible. However, Justice Robertson found that even if that was the case, that of itself does not mean that the evidence is going to be impermissible.

He stated that as a matter of case management, "the question is whether it is sufficiently clear at this time that the proposed survey could not produce relevant or admissible or sufficiently probative evidence" (A & E Television Network LLC v Discovery Communications Europe Limited [2011] EWHC 1038 (Ch)).

Justice Robertson held that this question and Pacific Brand's concerns should have been dealt with under the procedure set out in the Practice Note CM13, which sets out the details required in a notice of proposed survey and requires the parties to attempt to resolve any disagreement regarding those details before bringing the matter before the court for the court to determine its probative value.

The utility of survey evidence is still highly questionable. However it is clear from this decision that the court expects the parties to make every effort to reach agreement on the questions to be asked and the protocol to be followed before bringing any dispute about it to the court.

Nevertheless ultimately all that such evidence can do it to assist the judge in making his or her decision. The results of the survey are unlikely ever to be determinative.