There are two sides to every story

Evidence and Surveys in TM cases

Ellen Gevers

Douglas Bush

Jeremy Pennant

What we are aiming to cover

• How do you show a trade mark is distinctive?• Confusion – what evidence is required?• Reputation & Dilution• Reputation & Dilution• The role of Survey Evidence• Do`s and Dont`s for surveys

Proof of acquired distinctiveness

• EU (OHIM) / USA• What do you need to show?• Length of use?• Length of use?• Geographical spread?• Why and when is it relevant?• Can surveys help?

EU - Acquired Distinctiveness

• What is it? • Proceedings at OHIM• Which period is relevant• Which period is relevant• Which Territory & Public is relevant?

EUROPOLIS & GLAVERBEL• CHIEMSEE & survey evidence

EU - Acquired Distinctiveness

• EUROCOOL / COMPANYLINE

• Problems with CFI and ECJ Judgements• Problems with CFI and ECJ Judgements

USA - Acquired Distinctiveness• Five years substantial use• Ownership of prior registration on principal

register• Sales, advertising expenditures, etc... • Sales, advertising expenditures, etc...

showing extensive use of mark• Affidavits proving that the relevant public

recognizes that the mark distinguishes the source of goods or services

• Surveys proving secondary meaning

EU - Likelihood of confusion

Goal: show that a likelihood exists that the marks will be confused; directly or indirectly (CANON/CANNON)

Surveys sometimes less suitable:• Likelihood: concept of speculative nature• Actual Confusion: proof of confusion (material ex art. 76 CTMR)

Benelux Case LawBECEL / BENECOLIdentical goods BECEL is a well known TM

• 5 (!) surveys: on reputation BECEL & likelihood of • 5 (!) surveys: on reputation BECEL & likelihood of confusion

• Survey shows likelihood confusion: 31% of respondents thought that BENECOL came from manufacturer of BECEL

• Judges disregarded the results of the surveys; no likelihood of confusion between the marks BECEL and BENECOL

T-MOBILE / ID&T MOBILEIdentical services (mobile telecom) (A’dam Court 30/09/2004)

In preliminary proceedings:• Survey: T-MOBILE → acquired distinctiveness• Survey: ID&T → well-known mark in ‘Dance-scene’

Therefore unlikely that public perceives ID&T Mobile as →“ID“ and “T-MOBILE” → claim denied

Appeal before the Court• ID&T: survey showing no confusion (adverts & website)• T-MOBILE: survey showing that there is confusion, especially in

verbal reference to the marks

Confusion assumed based on survey evidence

Case law ECJ

LLOYD / LOINT’S (Lloyd Schuhfabrik / Klijsen Handel)(Lloyd Schuhfabrik / Klijsen Handel)

Phonetically similar marks for similar goods (shoes)

• Not a survey on likelihood of confusion• But a survey to show LLOYD had gained a reputation• ECJ replied Landgericht Munchen that indeed the reputation

should be taken into account when assessing the likelihood of confusion

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USA - Likelihood of Confusion

• Different tests• Du Pont: 13 factors -- TTAB• Polaroid: 8 factors – 2nd Cir.• Sleekcraft: 8 factors – 9th Cir.• Sleekcraft: 8 factors – 9th Cir.E.g. - Similarity of Marks - Similarity of goods- Strength of mark

Example of a TTAB Confusion Case

• AMTROL v. MID-ATLANTIC PLUMBING & WATER TREATMENT SYSTEMS (TTAB 2006)

Water Treatment Services Water Treatment Products

Reputation and Dilution• What is dilution?

• USA - Blurring / Tarnishment

• EU - Reputation + Unfair detriment or Unfair advantage

USA - Types of Dilution

• Blurring: Famous mark has become less distinctive due to association between famous mark and defendant’s mark

• Tarnishment: Harm to the reputation of the famous mark because of association between marks

EU: Detriment & Unfair advantage

Reputation + – Unfair detriment: adverse effect on the earlier mark:

• diminish its attractiveness (dilution or blurring) or

• devalue the image (detriment to repute)• devalue the image (detriment to repute)– Unfair Advantage:

• transfer of attractiveness (unfair advantage of distinctiveness) or

• exploits image and prestige (unfair advantage of repute)

USA - DilutionFactors to examine codified in 15 U.S.C. 1125

(i) similarity with the famous mark(ii) inherent or acquired distinctiveness of famous mark (iii) famous mark use is substantially exclusive(iii) famous mark use is substantially exclusive(iv) degree of recognition of the famous mark(v) intent to create an association with the famous mark(vi) any actual association with the famous mark

VICTORIA’S SECRETV Secret Catalogue, Inc. v. Moseley, (W.D. Kentucky 2008)

VICTORIA’S SECRET v. VICTOR’S LITTLE SECRET

• Court originally found dilution by tarnishment• US Supreme Court ruled actual dilution required• US Supreme Court ruled actual dilution required• Congress amended statue --actual dilution not

required• 10 years after case started, factors applied, found no

lessening of capacity to identify and distinguish goods or services (no blurring), but did find harm to reputation (tarnishment)

EU: Reputation and Dilution• OHIM Proceedings: opposition (art. 8 (5) or

injunction request (art 9(1)(c): similar mark/non-similar goods (& similar goods: DAVIDOFF).

• Reputation & Unfair advantage/Detriment: – address and prove separately– address and prove separately– On state-by-state basis

• Unfair advantage/Detriment: “Likelihood” (SPA - FINDERS T67/04 CFI)

• Interaction Reputation & Unfair advantage/Detriment

CHEVY (ECJ)CHEVY (General Motors/Yplon)

Survey to prove reputation for action against non-similar goods (cars / cleaning products) in Member state (Benelux)

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cleaning products) in Member state (Benelux)– It must be established that the mark is known to a significant

part of the relevant sectors of the public– Reputation in a part of one of the Benelux countries suffices to

proof reputation– The larger the reputation of a trademark, the more easily

detriment or dilution is assumed– Relevant public: the general public or a specific audience,

depending on the goods (survey!)

EU Case law

• ADIDAS

• Citi v Citi – 16th April 2008, CFI

Evidence of Reputation & Dilution

• USA• EU:

– Deadline for filing evidence– Reputation:

• What to prove? • What evidence to file? • Survey evidence? • UK - PEPSI v IPSEI – surveys

How useful is survey evidence?

Surveys in EU• Kind of Surveys

1. Measure recognition of a sign as a trademarka) To proof acquired distinctiveness b) To proof reputation of the prior mark

2. Surveys in which two marks are compared2. Surveys in which two marks are compareda) To proof (likelihood of) confusionb) To proof (likelihood of) detriment and/or dilution

• Why use them … and why not

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OHIM on survey evidenceWell-conducted surveys are considered to be particularly persuasive by OHIM if:• By independent and well-recognized organizations and

institutions• Sample interviewed properly chosen (without build-in bias)

• Number: 1000 - 2000 mostly sufficient • Number: 1000 - 2000 mostly sufficient • Profile (sex, age, occupation, background) representative for

whole consumer group• Method and circumstances, including a complete list of

questions in order to asses if they are relevant questions and not leading

• Percentage reflected in survey corresponds to the total amount interviewees or only the ones who actually replied

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Evidentiary Standardfor Surveys in USA

• Survey evidence is generally admissible• Must be relevant and reliable • Must be relevant and reliable • Errors in survey methodology typically go to

weight, not admissibility unless aggregated

USA - Experts

• Attorneys generally should not be the expert, the survey designer or conduct the survey. Can participate to some degree in question design.design.

• Experts:– Have experience in design of surveys– Unbiased (to some extent) in conducting survey– May be called on to testify about scientific

principles and/or opinion

EU - Expert evidence

• OHIM - BOUNTY Bar shape• UK – recent Gola v Globe case

General rules on surveys

• Conducted by a recognised institute or company• Large enough number interviewed (representable)• Definition and selection of relevant public (depending on goods)• Use of a control group• Use of a control group• Elimination of market leader position• Type of questions (not leading)• Method of the survey (geographical spread, location, time of

day, verbal/written)• Provide all data on the method used

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Universe = Target customers

• Don’ts– Under-inclusive: Not enough of

the right target customers

• Do’s– Choose the correct

mark’s customers: Sample

– Over-inclusive: To many types of people that are not part of the target customers

mark’s customers: junior user v. senior user?

– Correct geographic area, age, gender of purchasers

Target customersSample

SampleTarget

ExamplesUnder-inclusive • Selected one

customer’s client base but not the others

WRONG SAMPLE

Domino’s Amstar Sample

Over-Inclusiveothers

• Selected all buyers of gifts for girls under 12 instead of just buyers of dolls WRONG SAMPLE

Purchasers of Gifts for girls under 12

Cabbage Patch Dolls Buyers

Sample

Samples

• Do’s– Total population: Too expensive.

– Probability Sampling: each member of universe has same chance of being selected: also very expensive

Population Sample

chance of being selected: also very expensive

– Non-probability sampling or representative sample: Most Common. Sample from whoever is convenient while trying to represent universe adequately: Mall intercept, etc…

• Don’ts– Use too small a sample size (not statistically significant)

Population

Questions• Do’s- Clarify terms carefullyEx: Do you think this company

had to get authorization or sponsorship, that is

• Don’ts- Unrelated to the issue- Based on erroneous

definitionssponsorship, that is permission, to make this item?

- Probe answers to minimize guessing.

Ex: Why do you say that?

definitions- Word Associations:

What does ____ make you think of? = Imprecise question that does not address a specific trademark issue.

Ideal Question Format

This type of format has typically been held valid in several US courts:US courts:

1. [Screening question to eliminate persons in the industry.] 2. Who do you think puts out [product] shown here? (A picture of

[product] with its mark is shown). 3. What makes you think so? 4. Please name any other products put out by the same [company]

which puts out the [product] shown here.”

Another useful format

1. Show plaintiff’s product2. Show other products and defendant’s product3. Ask if any of the products are made by the same company.4. If yes, ask which product 5. Prompt details about why they seem to be made by the same

company.

Data, Interviewers and Other Considerations

• Do’s– Use experts wisely: Consider

using a previously conducted market research survey that

• Don’ts– Anything that could induce

bias: payment, coupons, suggesting answersmarket research survey that

asks relevant questions (typically removes bias)

– Approximate market conditions as closely as possible for administration of survey.

suggesting answers– Note answers incorrectly– Use unprofessional staff

Practical Tips on Surveys1. Combine legal survey with marketing survey

– Marketing often has bigger budget for surveys– Money is not considered lost if survey is disregarded

2. Surveys proving more ‘direct’ and real factors (like trademark awareness) are often more successful than trying to ‘prove’ more legally complex and hypothetical concepts (likelihood of confusion). Judges will want to decide on that themselvesJudges will want to decide on that themselves

3. Market survey showing reputation is helpful for showing likelihood of confusion

4. Market Share versus Trademark Awareness: survey is very helpful if TM awareness (people that know the brand) is much greater than the Market Share (people that buy the brand). e.g. FERRARI

5. Short deadlines: Have survey on Acquired Distinctiveness or Reputation ready before filing application / opposition

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Ellen Gevers / Knijff Trademarks Attorneys

� P.O Box 5054

1380 GB Weesp

The Netherlands

℡ (+31) 294 490 900� (+31) 294 416 722� e.gevers@knijff.com� www.knijff.com

Douglas Bush / Arent Fox LLP

� 1050 Connecticut Avenue NW℡ (+1) 202 857 9877� (+1) 202 857 6395

Jeremy Pennant / D Young & Co

� 120 Holborn London EC1N 2DY United Kingdom

℡ (+44) 20 7269 8550 � (+44) 20 7269 8555� jbp@dyoung.co.uk� www.dyoung.com

Washington, DC 20036-5993

USA

� (+1) 202 857 6395� bush.doug@arentfox.com� www.arentfox.com