Two of the most important aspects of trademark litigation are reputation and confusion. Thsi is because almost every trademark litigation will involve some kind of dispute about either reputation or confusion or both.
That makes surveys a very important element that can influence the outcome of a trademark litigation suit. Trade mark surveys are complex and typically require an expert survey team. However here are 10 tips to bear in mind when conducting a trademark litigation survey.
1. Use and/or include the basic rules of scientific research.
2. Be sure you are surveying the relevant target market. This may appear obvious for those unfamiliar with the subtleties of trade mark law. Depending on your cause of action you might be attempting to prove a variety of issues. The most common is likelihood of confusion. You are usually trying to prove that there is confusion amongst the relevant target market between a stronger user and a weaker user of the same or similar mark. In this scenario the target market would be the potential customers of the weaker user’s goods or services. But you might also have a scenario where you have a strong senior user of a family of marks and then a more junior but stronger user of the similar or the same mark. In this scenario the relevant target market would be the present and potential buyers of the strong senior user’s good or services (reverse confusion).
3. Businesses should understand that the way in which information relating to goods and services is shared has changed for good. The language of Web 1.0 and 2.0. Social media websites like Twitter and Facebook have become the superior benchmark in measuring brand awareness, so have blogs; search engines; meta tags; keyword sponsored search and other Internet related tools.
4. Choose your experts carefully. Make sure they are properly qualified. Sometimes the findings or opinions of your expert may not necessarily favour your case.
5. Think outside the box. Don’t just use established methodologies.
6. Remember that a survey can also enable the assessment of whether a case is worth pursuing. It can be a risk assessment tool.
7. This point is related to paragraph 2 above. Several different issues can arise in a trade mark case. Make sure that your survey addresses the relevant issues (i.e. is the issue confusion; misrepresentation (passing off); distinctiveness; dilution or bad faith, to name a few).
8. Cost/benefits analysis – how much is the information worth compared to the costs and expenses of conducting the research?
9. Time-scale – do you have sufficient time to conduct the survey including any statutory limitations.
10. What alternative interpretations can be read from the survey? This point is related to 4 above but is not quite the same thing. Point 4 relates specifically to choosing an appropriate expert for the survey. This is more a general point about the different ways the survey can be interpreted.
These are just some guidelines for surveys in trade mark litigation. There is no substitute for seeking actual legal advice and/or consulting with an expert survey team before commencing your trade mark claim.
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