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

High Court finds against WASPI women

The High Court has rejected the judicial review claim brought by the campaign group BackTo60 against the Department of Work and Pensions (DWP).

View blog

The importance of three magic words: subject to contract

A recent case illustrates the importance of ensuring that all emails discussing the terms of a proposed acquisition are headed ‘subject to contract’.

View blog

Vegetarianism is not a philosophical belief under the Equality Act 2010

In its Judgment earlier this month, the Tribunal considered whether vegetarianism is capable of being a philosophical belief capable of protection under the Equality Act 2010.

View blog

Time to increase the £25,000 cap on contractual claims in the Employment Tribunal?

The recent case of Ugradar v Lancashire Care NHS Foundation Trust has highlighted that the current cap on contractual claims that can be awarded in the Employment Tribunals is outdated and capable of producing real injustice.

View blog

mailing list sign up



Select which mailings you would like to receive from us.

Sign up