Date: 25 November 2019
Some brands are inherently strong, others become so through use. To paraphrase Shakespeare, some are born great, others achieve greatness; and in the age of social media, some may even have greatness thrust upon them. But when a brand is not born strong, how does its owner prove that it has achieved the recognition needed to secure registration and to prevent third parties from using it in the marketplace?
A simple and obvious answer is: consumer surveys. However, surveys are expensive and commercial interests increasingly global. In a shrinking world, how can a brand owner carry out surveys cost-effectively to meet the legal requirements of multiple jurisdictions?
The risks and costs of not considering this were thrown into stark relief recently when the English High Court rejected Glaxo’s passing off claim against Sandoz regarding the latter’s use of the colour purple on inhalers. In its English case, Glaxo relied on surveys carried out in Germany, which complied with German rules; they did not comply with English legal guidelines, and as a result, their probative value was deeply undermined.
As an Anglo-German firm, we are intimately familiar with the legal requirements for surveys in both of these important jurisdictions in Europe. We have prepared the below summary and recommendations for our clients with interests in both of these jurisdictions. By following these, brand owners can maximise their chances of scoring a win for their brand through survey evidence on distinctiveness.
For a consumer recognition survey to be admissible in the UK, those instructing it and carrying it out must comply with the so-called "Whitford Guidelines". Under these:
In general, these points relate to survey methodology – i.e., how a survey is carried out, so that the court or the UKIPO can properly assess the value to be given to the results.
In Glaxo, it was the failure to provide this methodology which undermined the value of the survey results. The surveys relied on contained no description of methodology, and although some of the surveys provided some information about how they were carried out, there was no single document recording this for any of the surveys. Even what information was there, was incomplete.
In the UK, survey evidence is regarded as a form of expert evidence, whose value derives from its statistical validity. Consequently, it is normal to work with an experienced survey provider in designing and carrying out a survey, and for that provider to give expert evidence to the court or the UKIPO as to what the survey results show. Care will need to be taken to identify the “average consumer” for the purpose of the survey, and to ensure that the size and locations of the survey are statistically significant. Finally, the questions asked must be considered, and in this regard, the importance of ensuring that these are not leading, and that they do not invite speculation, cannot be overemphasised.
Because of the costs involved in expert evidence, permission will generally be required from the court or the UKIPO to carry out surveys intended for use in legal proceedings. This permission should be sought in advance, since if permission is not granted the surveys will not be admitted and costs in relation to them will not be recoverable. Permission is not normally required, though, where surveys are merely relied upon to show acquired distinctiveness in support of a trademark application, where no other party is involved.
In contrast with the UK, where an express explanation of survey methodology is of fundamental importance, in Germany it almost seems as though the importance of methodology is so obvious that it barely requires mentioning. It is taken as read that the prerequisites for reliable statistical research, such as adequate sample size, should belong to every ethical and scientifically sound survey design. That does not, of course, mean that these requirements are necessarily self-explanatory or easy to achieve.
The starting point for designing consumer brand surveys in Germany is the so-called “three-step” test, which directs the wording of survey questions. Applying this approach to surveys generally, in the UK and Germany, can help create a survey that that satisfies the needs of both worlds.
One of the most obvious disadvantages of surveys is cost. Consequently, it is important to bear in mind that it is not always necessary to produce a consumer survey in order to establish a level of recognition of 50% or higher among the relevant target audience – the percentage recognition required to prove acquired distinctiveness in Germany. Instead, a party can produce documentation about how the trademark has been used, e.g. the scope, place and time of use – which makes a recognition rate of at least 50% probable. Additionally, declarations about recognition of a brand from the well-known German industry and trade chamber (Industrie- und Handelskammer “IHK”) are also admissible and can be persuasive.
Only when such evidence is not sufficient, should a survey be considered. If it is, then a useful strategy exists to save money and trouble: the trademark department of the GPTO can assist in formulating the survey questions to ensure they are admissible. This coordination ensures that the survey is consistent with the “three-step” methodology, a practice established in legal polling in Germany in recent decades, and which was first codified in 1995. The 2019 GPTO Guidelines for the Examination and Registration of Trademark Applications reproduce this model. They merely add a fourth step, which precedes the traditional ones, thereby leading to the following exemplary questions:
The German approach is in certain ways more structured than that in the UK, where there is no pre-existing, legally imposed level of recognition that a mark must achieve in order to be regarded as distinctive in fact. The level of recognition varies depending on the goods or services and the target consumer.
The German approach is also more collaborative than that in the UK, where it is far from typical to ask the UKIPO for guidance in formulating proposed survey questions when preparing a survey to prove that a mark applied for has acquired distinctiveness.
Nevertheless, despite the differences, if a survey complies with the more stringent Whitford Guidelines on clarity as to methodology and the avoidance of leading questions, it is likely to be admissible also in Germany. Awareness of the different requirements can help in preparing surveys that are equally valid and admissible in both the UK and Germany, while avoiding the costs associated with getting it wrong in one or both. It is, indeed, the best of both worlds.
 Glaxo Wellcome UK Ltd. & Anor. v Sandoz Ltd. & Ors.  EWHC 2545 (Ch)
 From Imperial Group plc v Philip Morris Ltd  RPC 293
 2019 GPTO Guidelines for the Examination and Registration of Trademark Applications, p. 57. ]. Recognition rates below 50% indicate that acquired distinctiveness has not been reached (yet), and usually require further proof. However, the percentage is only an indicator, not an exact threshold.