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December 1, 2018 Vol. 73 No. 20 Back to Bulletin Main Page

CANADA: Federal Court Clarifies Requirements for Admissibility of Survey Evidence in Trademark Matters


The Federal Court of Canada’s decision in Imperial Tobacco Canada Limited v. Philip Morris Brand Sarl provides valuable insight regarding the requirements for admitting survey evidence in trademark matters in Canada. June 15, 2018, FC 503.

Imperial Tobacco Canada Limited (ITL) brought nine appeals against Philip Morris (PM) from decisions of the Canadian IPO’s Trademarks Opposition Board, which rejected all of ITL’s oppositions to the registration of PM’s marks on the ground that they were not confusing with ITL’s registered trademark MARLBORO (TMDA55988) pursuant to Sections 12(1)(d) and 6(5) of the Trademarks Act. This case considers the admissibility of new survey evidence sought to be introduced in these appeals. Of the nine appeals, the new survey evidence was only admitted in the appeal of Decision 4 (T-2609-14), resulting in that appeal being allowed and the associated trademark applications being refused. Because the new survey evidence was found inadmissible in the remaining eight decisions, ITL’s appeals were dismissed.

In determining whether the new survey evidence was admissible, the court assessed whether the survey met the requirements of relevancy and reliability, including:
  1. The survey must seek responses for all the applicable goods or services.
  2. The trademark at issue should apply to the relevant goods or services.
  3. The survey should specifically test the marks at issue.
  4. The marks used in the survey should be precisely or substantially similar to the applied-for marks at issue. The “precision” required to compare word marks is “minutely exact” whereas, in the comparison of design marks, “precisely” may be given a wider berth. In determining whether distinctions between design marks are sufficiently “precise,” reference should be made to the test of confusion of marks and the factual context.
  5. The survey questionnaire must ask the right questions, i.e.:
        a. The survey questions cannot be abstract or take place in a vacuum, but they must provide a
            concrete context that relates to the underlying issues; and
        b. The survey questions should not direct persons into a field of speculation and must not be
            suggestive of an answer.
  6. The survey should include knowledgeable participants. The target participants should be persons most likely to have knowledge of the goods or services and how they are employed.
In summary, in trademark disputes, survey evidence can be admitted if relevant and properly designed.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

© 2018 International Trademark Association