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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).

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