the use of survey evidence · 2/17/2015 · size of the sample 8 ... i show you a candy (or a...

The use of survey evidence

Stefan Martin

Member of the Boards of Appeal

February 2017

• Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v

Boots- und Segelzubehör Walter Huber (C-108/97) and Franz Attenberger (C-109/97), 53

• Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 37)

• Judgment of 21 November 2012, T-338/11, ‘photo.com’, para. 42

Endorsed by the Court

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• 2.12.8.4 Opinion polls and surveys

Opinion polls concerning the level of recognition of the trade mark by the relevant public on the market in question can, if conducted properly, constitute one of the most direct kinds of evidence, since they can show the actual perception of the relevant public.

EUIPO Guidelines

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• Acquired distinctiveness

• Lack of distinctive character: Decision of 3 May 2013 – R 1006/2011-2 – DEVICE OF A LIPSTICK KISS PRINT (FIG. MARK)

• Proof of use

• Enhanced distinctiveness

• Confusion

• Trade mark has become generic

• Use of a sign with more then local significance: Decision of 19 December 2013 – R 1294/2011-1 – CULTURE (FIG. MARK)

• Reputation

Area of use of surveys

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• EUIPO Guidelines:

1. Whether or not it has been conducted by an independent and recognised research institute or company, in order to determine the reliability of the source of the evidence.

2. The number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question.

Admissibility

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3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.

4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.

Admissibility

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• Decision of 27 March 2014 – R 540/2013-2 – SHAPE OF A BOTTLE (3D MARK)

• Former employee not independant

Independance

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• EUIPO Guidelines

• In principle, samples of 1 000 – 2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned.

Size of the sample

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• Ampafrance SA v OHIM, Case T-164/03, paragraphs 78 to 83

Moreover, in the present case, a group of 2,017 people questioned should be regarded as being large enough to be representative.

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• R 1345/2010-1 ‘Fukato Fukato (fig.)’

In support of its claim under Article 8(5) CTMR, the opponent relies exclusively on an opinion poll that was carried out in 2007. That opinion poll was conducted by an independent company. In principle, samples of 1 000–2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned. The opponent’s opinion poll was based on a sample of 500 interviewees, which is not sufficient in respect of the services for which reputation is claimed

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• Decision of 18 February 2013– R 1671/2011-2 – DEVICE OF AN ELK (FIG. MARK) / DEVICE OF AN ELK (FIG. MARK) et al.

600 not suffficient with regard to the population of Italy

• Decision of 2 February 2015 – R 392/2013-4 – GOLDEN EAGLE (FIG. MARK) / RED CUP ET AL.

510 not sufficient considering the size of the population in Germany

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• Decision of 1 September 2011 – R 1696/2010-1 – CC rent a car / RENT A CAR et al at para. 41

In addition, the survey is limited to a sample of 1922 persons, which is not representative in respect of a country with more than 60 million inhabitants. As a result, the Board does not attach any probative value to this opinion poll.

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• Decision of 11 December 2012 – R 513/2011-2 – SHAPE OF A FOUR - FINGER CHOCOLATE BAR (3D MARK)

para. 70

514 persons sufficient for the Netherlands

(0.003 percent of the population)

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• Decision of 23 November 2010 – R 240/2004 – WATERFORD STELLENBOSCH (FIG.) / WATERFORD

500 persons for the UK is sufficient

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• Decision of 19 December 2013 – R 1294/2011-1 – CULTURE (FIG. MARK)

200 interviewees is sufficient

• Decision of 11 May 2004 – R 105/2003-1 – BRACELET-MONTRE (3D MARK) at para. 39

But not 70 for the UK

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• Randomly

• EUIPO Guidelines (2.12.8.4)

• R 1191/2010-4 ‘MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.) (para. 27)

• The survey submitted by the opponent does not provide conclusive information to demonstrate that the earlier sign is well-known to the Spanish public for aerated waters as the interviewees were carefully selected on the basis of their origin, that is, Colombians resident in Spain. This is only a very small part of the population living in Spain

Selection of the sample

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• Decision of 17 June 2014 – R 107/2014-5 – Eros Helios (FIG. MARK) / HELIOS et al.

The survey evidence should indicate how the respondents have been selected and on what basis

• Decision of 11 December 2012 – R 513/2011-2 – SHAPE OF A FOUR-FINGER CHOCOLATE BAR (3D MARK)

(at para. 61)

Number, age, gender, regions, occupation ect…

Profile of the sample

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• The sample must be representative

• Should be composed of all actual and prospective costumers

• What is the target population and what is the survey population

• Discussing the differences between the two of them and the consequences of that differences on the result

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• Castellblanch, SA v OHIM, Case T-29/04, it held, at paragraphs 65 to 68

• Reputation of the mark Cristal in France

• Survey conducted among wine waiters or chief cellar men in hotels, restaurants and upscale wine cellars

• But these persons are not “part of the relevant public”

The relevant consumer

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(at para. 61)

Face-to-face, internet, telephone

How is the interview conducted

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• Decision of 17 June 2014 – R 107/2014-5 – Eros Helios (FIG. MARK) / HELIOS et al.

The survey should indicate the response rate

Response rate

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• Judgment of 12/07/2006, T-277/04, ‘Vitacoat’, paras. 38-39

In principle it is not inconceivable that a survey compiled some time before or after the filing date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue.

Time

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• Decision of 27 March 2014 – R 540/2013-2 – SHAPE OF A BOTTLE (3D MARK) (at para. 51)

Therefore, even if it is accepted that the fact that all these surveys took place after 29 December 2011 (i.e. filing date of the CTM application) does not, in principle, annul their corroborating probative value[…]

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• A survey conducted after the relevant day is admissible since it was conducted within a year of the relevant date

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• Decision of 19 December 2013 – R 1294/2011-1 – CULTURE (FIG. MARK)

• This is particularly true when the interviewees have been

asked for how long they had been aware of a specific trade mark

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• A survey conducted five years before the relevant date is not admissible

• Decision of 19 December 2014 – R 1207/2014-5 DEVICE OF A JUMPING ANIMAL (FIG. MARK) / PUMA (FIG. MARK) et al.

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• Decision of 13 November 2012 – R 101/2011-2 – pink ribbon / PINK RIBBON et al.

52. The Board adds that the evidence post-dating the filing date of the

CTM application may not be sufficient on its own to demonstrate reputation on this filing date, however it is not irrelevant either. Given that reputation is usually built up over a certain period of time and cannot simply be switched on and off, and that certain kinds of evidence (for example, surveys) are not necessarily available before the relevant date, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence (see also, by analogy order of 27 January 2004, C-259/02, ‘Laboratoire de la mer’, para. 31).

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55. The Boards finds that the survey is reliable from the point of view of its independence, methodology and relevance in time.

56. First, from the time viewpoint, a survey conducted in July 2000 is appropriate for establishing the reputation of the earlier mark at the moment the contested mark was applied for (December 1999), as recognition is normally the result of a long process in time and generally cannot be built up instantly

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• It is irrelevant whether the consumer associates a sign with the right undertaking

• What matters is that it associates it with an undertaking

• Decision of 27 February 2015 R 1787/2014-5 ‘Irresistibly smooth’, para. 28-30

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• The survey should be conducted in relation of the products covered by the application

• The survey was conducted in relation with specialist periodicals but the mark was registered for periodicals in general

• Decision of 4 December 2014 – R 1121/2014-4 – BRAUWELT, para. 27

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• Filter questions to reduce guessing (I have no clue)

• Open ended questions (what comes to your mind…?)

• Use of probes to clarify ambiguous answers (any thing else?)

What questions should be asked

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• Case T-344/03

35. In respect of the results of the opinion poll carried out in January 2000, they are also irrelevant. It should be observed in that respect that that poll was carried out three and a half years after the filing of the Community trade mark application. Further, as the Board of Appeal noted in paragraphs 13 and 14 of the contested decision, the conclusions reached by that poll do not have evidential value since the question ‘If you had to define the superior quality of a product, which one word would you use?’ induced consumers to reply by using common expressions such as ‘good’, ‘excellent’, ‘delicious’ and ‘best’, but did not provide a means for analysing the meaning which a metaphoric indication like ‘oro’ could evoke for consumers.

Suggestive questions disqualify the survey

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• Decision of 11 December 2012 – R 513/2011-2 – SHAPE OF A FOUR-FINGER CHOCOLATE BAR (3D MARK) at para. 70

I show you a candy (or a biscuit) product. Can you tell me which product this reminds you of?’ (top-of-mind recognition)

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• Decision of 6 October 2011 – R 1635/2010-1 – Pro V / PRO-V et al.

26. In the course of the present appeal, the opponent has filed a Market Study in Spain. This study shows recognition of the trade mark ‘Pantene Pro-V’ by 96.2% of the participants. In addition, more then 96% of the respondents perceive the mark as a ‘prestigious mark’.

27. However, the Board notes that the questions submitted to the participants ( is pro-v a prestigious mark) are rather suggestive and are leading to the answers. In addition they imply legal concepts and considerations. Indeed, the legal community has been debating the concept of what constitutes ‘a prestigious mark’ for decades. The same remark applies to the notion of ‘damaging the image and prestige of […] and ‘the negative effect on the perception of the quality of the Pantene Pro-V/Pro-V trademark’. In addition, it is unclear whether the 1005 persons who answered the questionnaire remains representative of the initial sample. As a result, the Board does not attach any probative value to this Opinion poll.

Unclear questions

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• Respondents are asked whether they associate the claimed trademark with a product of one company or more than one company, and then are asked why they think that.

Acquired distinctiveness surveys

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• Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG v OHIM

(Johnson's Veterinary Products Limited intervening), Case T-277/04, the General Court held, at paras. 38 to 39

• In the present case the evidential value of the 1997 survey is weakened, as the Board of Appeal rightly observes, by the fact that the interviewees did not answer spontaneously, since the questionnaires used showed them the sign at issue and mentioned the goods. That finding is not called into question by the applicant‘s argument, first that it was necessary to specify the goods concerned to prevent the interviewees indicating trademarks for food intended for human consumption and, second, that a survey without any reference to the mark concerned leads to useful results only in cases where the marks enjoy a high degree of recognition (‗berühmte Marken‘) (see paragraph 27 above). It would have been possible to mention to the interviewees the goods concerned without referring to the VITAKRAFT marks or to show them a list of different marks one of which was the earlier sign at issue .

The questions should be aimed at receiving a spontaneous response

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• BIC SA v OHIM, Case T -262/04, paragraphs 82 to 89

• As for the survey of smokers in November 2002 in France, Italy, Ireland, Greece, Sweden and Portugal, the Court finds that a drawing or photograph of only BIC lighters, without any verbal or figurative features, was shown to the people who were questioned, and they were asked which mark they associated most with the image of that lighter. It cannot therefore be concluded that that survey shows that a significant proportion of French, Italian, Irish, Greek, Swedish and Portuguese consumers identifies, by means of the mark applied for, the product in question as originating from the BIC company rather than another company. It would have been another matter if different lighter shapes had been shown during the survey instead of the single shape of the trademark applied for. It would have been possible in that case to take into account the number of people who spontaneously and without being influenced attributed the picture of the shape in question to BIC.

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63 .This data is supported by the surveys carried out in France on July 2007 by TNS Sofres and in Italy on March 2008 by GfK Marktforschung, which, after the question of ‘we are now going to talk about confectionery. When you see this picture, which products come to mind? (France) / ‘I would now like to show you a sweet or a biscuit product. Could you please tell me what this product makes you think of? (Italy)’, shows a ‘top of mind’ spontaneous attribution of the product with the shape of the contested mark to ‘Kit Kat/Nestlé’ of 46% in France and of 44.8% among buyers/eaters of sweets/biscuits (‘relevant public’) in Italy. These surveys point out that other possible answers to that question were ‘chocolate/chocolate bar’ without specifying a brand. This information leads the Board to assume that the above mentioned question was asked without influencing the public to recognise a trade mark.

Fair and non leading questions

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• Decision of 22 March 2005 – R 496/2003-4 – 9 TELECOM / -T-e-l-e-k-o-m- (FIG. MARK) at para. 29

Question 1 : ‘Have you seen this image before in connection with goods and services?’, was designed as a so-called ‘closed question’ giving the interviewee three possibilities to answer: ‘Yes, I have seen it before’, ‘Yes, it seems familiar to me’, ‘No, I have never seen it before’. Question 2: ‘The second question, ‘With which goods and services do you associate this image?’, was a so-called ‘open question’ allowing for six answers. Question 3: ‘Have you seen this image before in conjunction with telecommunications such as with the telephone, faxes etc.?’ Again was a closed question with the three answering options set out above. Question 4: ‘To you, does the image represent a very specific company or do you think that this image is used by several different companies within the telecommunications sector and accordingly by companies that do not have anything to do with each other?’ Left the three answering options: ‘It represents a very specific company’, ‘It is used by several different companies’ and ‘Do not know how to respond to the question?’. Question 5A asked: ‘Can you tell me what this company is called?’ In this case, only ‘Telekom’ was named, Question 5B insisted: ‘What sort of company is that? Can you describe it more precisely for me?’ Question 5C further clarified: ‘When you said ‘Telekom’, did you mean one of the successor companies of Deutsche Bundespost or did you mean a completely different company which also has the word “Telekom” in its company name?’, and left the two possible answering options. Finally, the last (open) question asked: ‘Can you tell me what these companies are called?

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• Decision of 20 February 2015 – R 1504/2014-4 – MOUNTAIN WOLF (FIG. MARK) / ERISTOFF (FIG. MARK) et al.

No follow up questions like what product comes to your mind when seeing this logo!

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The population was properly chosen and defined as the general population in the United Kingdom, taking into account that consumers targeted by the earlier mark are members of the public at large purchasing crystal products. The sample chosen was representative of that population in terms of age (six different segments from 16 to over 65 people), geographical distribution (twelve different regions representing the nationwide market) and socio-economic profile (four different categories A, B, C and D, which, according to the National Readership Survey codes, correspond respectively to upper middle class, middle class, lower middle class and working class). From the last point of view, it is worthy to note that the survey focused particularly on the middle class and lower middle class segments, which can be considered the optimal universe as they are, on the one hand, the most widespread categories in contemporary Western society and, on the other hand, those who can afford purchasing goods which are somehow superfluous, in the sense that they do not cover essential needs, such as crystal products.

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• Decision of 22 March 2010 – R 978/2009-2 – CACAOLAT (FIG. MARK) / CACOLAC

23 . The Board notes that, as the cancellation applicant rightly points out, the guidelines deal with evaluating the credibility of opinion polls or market surveys in the context of Article 8(5) CTMR. In any event, even if the precise circumstances in which the survey was conducted are not sufficiently known for it to enjoy a high degree of probative value, it is none the less true that the survey or its results have been cited in various independent press articles even nine or ten years after the date (see Objectif Aquitaine, July/August 2004; Arômes Ingrédients Additifs N° 56 – February/March 2005; TGV Mag – Voie Lactée pour mythe chocolate – undated). This lends credence to the view that the survey is not totally devoid of probative value and can thus offer some further indications that the mark has been used throughout the relevant period.

A survey subsequent ‘saved’ by its publication by a third party

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• Decision of 24 October 2013 – R 273/2013-1 – MOVISTAR UNO / UNO et al.

50. The Board does not find that there are relevant circumstances which would justify the finding of inadmissibility of the evidence at issue. In the case at hand, the Board notes that the belated evidence submitted by the opponent, the market surveys, is clearly meant to supplement the evidence already filed before the Opposition Division within the time-limit.

Late filing of survey evidence

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1) the purpose of the survey; 2) a definition of the target population; 3) a description of the sampled population; 4) a description of the sample design; 5) a description of the results of sample implementation; 6) the exact wording of the questions used; 7) a description of any special scoring methods; 8) estimates of sampling error; 9) clearly labeled statistical tables; 10) copies of interviewer instructions, questions, validation results and code books; and 11) objective criteria on how potential respondents could react.

How to present the survey

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• The issues

• Difficult to control the survey process without the guidance of an interviewer

• The potential difficulty to present stimuli to the respondents via the internet

• The limited ability to obtain complete answers to open-ended questions since the respondent has to type the responses himself

• No possibility to clarify responses

• The so called professional ‘respondents’ may not be representative

Internet surveys

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• Decision of 18 February 2013– R 1671/2011-2 – DEVICE OF AN ELK (FIG. MARK) / DEVICE OF AN ELK (FIG. MARK) et al.

Finally, the opponent has not explained the controlling or verifying conditions under which this on-line survey was conducted and consequently, the Board cannot determine that the answers shown in the survey have not been obtained without parallel external information.

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• Decision of 3 February 2015 – R 2092/2014-5 – GRAU INTREG (FIG. MARK)

2% recognition is not representative

• Decision of 2 February 2015 – R 392/2013-4 – GOLDEN EAGLE (FIG. MARK) / RED CUP ET AL.

25% market recognition is not sufficient to prove enhanced distinctiveness through use

How to assess the results

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Thank you for your attention!

the use of survey evidence · 2/17/2015 · size of the sample 8 ... i show you a candy (or a...

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