0370 270 6000

already registered?

Please sign in with your existing account details.

need to register?

Register to access exclusive content, sign up to receive our updates and personalise your experience on brownejacobson.com.

Privacy statement - Terms and conditions

trade mark surveys not quite dead

28 July 2014

The value of survey evidence in trade mark and passing off disputes has been called into question following criticism of this evidence method in a number of high profile cases, not least in the M&S v Interflora litigation. The message from the judiciary in this case was that a survey should only be admitted if it is of real value and even then only if the value justifies the cost; a threshold that litigants have found it hard to reach to date. The widely accepted view following this case was that surveys are dead.

However, a recent decision in Enterprise Holdings v Europcar has allowed survey evidence in relation to distinctiveness (to assess whether Enterprise’s green logo had acquired distinctive character through use) in the context of likelihood of confusion and dilution. In this case, Morgan J applied the guidance set out in Interflora and also introduced a requirement that it was necessary to show (at the 'gatekeeper' stage - trial is yet to happen) a likelihood that the survey would be held to be valid at trial (to be established on the basis of documents alone, and without the need for expert cross-examination).

Interflora distinguished between surveys to show confusion and those to show distinctiveness, but Morgan J said that did not mean that the test for a distinctiveness survey was any less strict. So surveys are not quite dead (although Europcar is appealling).

related opinions

Remote trials – here to stay?

With cross-country travel and in person gatherings largely prohibited due to the Covid-19 pandemic, the Courts are using remote or virtual trials to ensure the justice system ticks along.

View blog

Directors who fail to prepare, should prepare to fail

Two recent judgments demonstrate the risk that directors (of insolvent companies) face of being personally liable if appropriate records and procedures are not followed and if it cannot be shown that certain payments were in the interests of the company.

View blog

Remote mediation – here to stay?

Mediation has long been considered an effective method of alternative dispute resolution. With ‘in-person’ mediations no longer possible, remote or online mediations have risen to the fore.

View blog

Impact of Covid-19 upon level of fine

Two cases have considered the issue of Covid 19 as part of the sentencing exercise. In the most recent, failures by a principal contractor Modus Workspace, who design and refit refurbishments, led to a £1.1 million fine after an engineer was injured from a fall from a roof.

View blog

mailing list sign up



Select which mailings you would like to receive from us.

Sign up