The Trademark Reporter®
Global Trademark Resources

November-December, 2010 Vol. 100 No. 6 Back to TMR Main Page
The Value and Treatment of Survey Evidence in Different Jurisdictions
Editor’s Note: The Trademark Reporter is pleased to publish
in this issue the article of moderator Kate Swaine (Wragge &
Co LLP (United Kingdom)), and panelists, Alexander Bayer
(Wragge & Co LLP (Germany)), Julia Holden (Trevisan &
Cuonzo Avvocati (Italy)), and Lisa Lennon (Gilbert + Tobin
(Australia)), who presented their analyses at the INTA
Annual Meeting session in Boston last May.

This article examines the value and treatment of survey
evidence in trade mark cases in a number of different jurisdictions. There is little indication that parties are penalised for a failure to rely on survey evidence in the jurisdictions discussed in this article, but survey evidence does seem to be a natural evidential choice in disputes where issues such as likelihood of confusion and distinctiveness must be assessed through the eyes of the public. However, the decision to embark on a survey is not as straightforward as some may assume.

Although the approaches taken may differ between
jurisdictions, there are also some common themes, which include the following:

1. the practical challenges of carrying out a survey, which
are defined differently in different jurisdictions;
2. the scepticism of the judiciary, and conversely, the
judiciary’s willingness to rely on survey evidence; and
3. the involvement that the judiciary expects to have in
the development of the survey.

This article considers the approach to survey evidence taken
in the Court of Justice of the European Union (“CJEU,” formerly known as the European Court of Justice (“ECJ”), Italy, England and Wales, Germany, and Australia. We will compare the approach to surveys in each country, focusing on the following topics:

1. an overview of the country’s approach to survey
2. judicial expectations and attitudes regarding surveys;
3. precedents and history relevant to surveys;
4. practical issues in executing a survey; and
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5. Conclusions and summary thoughts about surveys in
that country.
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