0370 270 6000

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

Wide interpretation of “detriment” caused victimisation claim to succeed

The Employment Appeal Tribunal (EAT) decision in the case of Warburton v The Chief Constable.

View blog

Restrictive Covenants – are changes coming?

Restrictive covenants are widely recognised as a complex area of employment law that is of key importance to many organisations. However more recently, they have become a hot topic with the Government launching their consultation.

View blog

Are whistleblowers entitled to keep their employer’s confidential documents?

In Nissan v Passi, the High Court recently considered the issue of an employee retaining confidential documents belonging to his former employer in the context of the employer’s application for an injunction seeking the return of such documents from the employee.

View blog

Dealing with Covid Rent Arrears – an overview but no specifics

Following on from our recent article on the release of the updated Code of Practice for dealing with commercial rent arrears that have accrued throughout the pandemic, we continue to highlight what the overall principles seek to ensure - fairness and proportionality for both landlords and tenants across each step of the arbitration process.

View blog

Mailing list sign up

Select which mailings you would like to receive from us.

Sign up